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Archive for: Directive 89/104/EEC

The Polish TIFFANY’s trade marks saga continues

January 13th, 2010, Tomasz Rychlicki

Some time ago, I reported in posts entitled “Poland: Tiffany fought with Tiffany” and “Poland: cross-border reputation” about two American companies that were disputing trade marks with a TIFFANY element before the Voivodeship Administrative Court (VAC). The New York’s company argued inter alia that use of TIFFANY trade mark for goods such as footwear is a parasitic activity that uses another’s trade mark reputation and is bringing undue financial benefit to the holder of national registrations. The Company also stressed the fact that its trade mark is subject to protection under article 8 of the Paris Convention.

The VAC in a judgment of 24 July 2008, case file VI SA/Wa 238/08, dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeals against the Polish Patent Office (PPO) decision of 19 March 2007, case files Sp. 68/04 and Sp. 69/04, regarding the cancellation of the right of protection for word-figurative trade marks: TIFFANY R-128063 and “Tiffany & Broadway Inc.” R-128064 which were registered in class 25 for shoes. The VAC ruled that the application for the protection of the TIFFANY mark for goods in class 25 was contrary to the principles of social coexistence because it caused the risk of weakening the reputation of the trade mark. Given the fact that the shoes are cheap and readily available, there is a risk of dilution of the reputation of TIFFANY trade mark and it may lead to lose its attractiveness among the exclusive clientele of goods bearing this mark.

The company filed a cassation complaint to the Supreme Administrative Court (SAC).

The Supreme Administrative Court in a judgment of 8 July 2009, case file II GSK 1110/08 ruled that the reputation of a trade mark is associated with its highly distinctive character. One could say that a reputed trade mark is the one that has a high ability to automatically trigger associations with the product for which it was registered. It is quite obvious that this ability will be weaker, adequately to the number of cases of using the same or similar trade mark as a designation of other goods that are originating from other entrepreneurs. With regard to the plea of weakening (the dilution) of the reputation of the Tiffany trade mark, i.e. weakening its individuality, based on the ability to cause the automatic association with the goods marked by this sign, such effects are also caused by unquestioned by the Court numerous registrations of identical or similar trade marks for other entrepreneurs for various other goods, as well as the use of this sign the name of very different businesses.

The SAC in a judgment of 8 July 2009, case file II GSK 1111/08 ruled that the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments, do not explicitly provide for any special protection for unregistered reputed trade marks. However, the doctrine and the Polish case law have already accepted the concept, that such protection could be provided under article 8(1) of the TMA

A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;

in particular looking at the circumstance of “a trade mark conflicting with the principles of social coexistence”, from the subjective perspective – it was commented that, the “contradiction/variance with the principles of social coexistence” may concerning the conduct/behavior of the applicant. On the basis of such conclusions, the registration of a sign for the goods of another kind, if the registration was intended to use the reputation of another’s trade mark or it was a threat of such reputation, was excluded. A trade mark application that was filed contrary to the principles of social coexistence, was an application made in bad faith. The absolute grounds/obstacles that are provided against the registration of the mark as defined in article 8(1) of the TMA do not directly refer to the relationship between the sign that was applied for and any other competing trade mark, however, in accordance with the accepted interpretation of that provision, in case of the infringement of the rules of social coexistence, the obstacle could be the inappropriate behavior on the applicant (its actions done in bad faith). The assessment of applicant’s actions, who was motivated by the desire to use another’s trade mark reputation, should therefore be also varied according to circumstances of its motivation and, not only related to the trade mark itself.

The application for the right of protection for a trade mark that was made with the intent to use another trade mark’s reputation should be judged as an application that was made with the breach of the rules of social coexistence (application made in bad faith), regardless of whether it concerns a reputed registered trade mark or unregistered reputed trade mark.

The Polish case law, for instance the Supreme Administrative Court in its recent judgment of 9 May 2008, case file II GSK 506/07, that was previously reported in the post entitled “Poland: proving the fame of a trade mark“, already established the rule that in a case of famous trade mark and its reputation, besides its recognition, it must be also characterized by the following characteristics:

market share/participation (both quantity and value of sold goods),
range and long-lasting of an advertisment of the product bearing a trade mark,
territorial and temporal range of use,
licences granted for trade mark use, quality of goods bearing a trade mark,
value of a given sign in assessment of an independent financial institution,
size and extent of expenditures spent on promotion of a mark,
the relationship on prices of substitute goods,
if (and to what extent) the mark is used by third party.

The SAC also noted that the Community case law provides several fundamental conditions for the recognition of a trade mark as a reputed one. These are:

knowledge of the trade mark by a significant group of customers,
the contribution of the trade mark in the market,
intensity and geographic scope of the use,
intensity matching of goods with the trade mark,
the size of expenditures on advertising and promotion of the trade mark.

The SAC cited inter alia the judgment of the Court of Justice of the UE of 14 September 1999 in case C-375/97, General Motors and the judgment of the Court of First Instance of 13 December 2004 in case T-8/03, El Corte Ingles and the CFI’s judgment of 25 May 2005 in case T-67/04, Spa Finders.

It is also clear that the reputation of a trade mark must be assessed and established in the country in which the protection is sought. If one would like to qualify a given trade mark as a reputed one in the Republic of Poland, then the argument of the international reputation of a trade mark is not sufficient. The basic circumstance for the recognition of the reputation of a sign in a specific country is to show by a person who is invoking this argument, the market share in terms of both quantity and value of goods sold.

The SAC held that provisions of the First Directive 89/104/EEC of 21 December 1988 do not preclude the possibility of granting the protection to unregistered reputed trade marks under the national law. Just to keep it in order, it is worth adding, that 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, provides in article 132(2)(iii)

2) A right of protection for a trademark shall not be granted, if the trademark:
(iii) is identical or similar to a renown trademark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark. The above provision shall apply to well-known trademarks accordingly.

for the protection of registered trademarks to the extent of the wording of article 4(4)(a) of the Directive. The trade mark application that was made in bad faith shall be rejected based on the absolute ground for refusal of protection based on provisions of article 131(2)(i) of the IPL.

2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,

The SAC ruled that the provisions of article 4(4)(a) of the Directive cannot be interpreted as the maximum limitation for the protection of famous marks in the national law and it would be difficult to follow the arguments that the First Directive 89/104 is an example of the so-called “complete harmonization” citing the judgment of the Court of Justice of the European Union of 9 January 2003 in case C-292/00, Davidoff & Cie S. A.

According to the SAC, the court of first instance (VAC) wrongly assumed the bad faith of the applicant and it did not consider the fact that the applicant has conducted its business in Poland since 1990 with the use of the mark, and after about five years of its activity, the company applied for the registration of the mark. These circumstances certainly were not indifferent to assess the intentions and purposes of the applicant so the VAC should address them in the grounds of the appeal.

When deciding on the interpretation of article 8(1) of the TMA, which allows for the protection of not registered reputed trade marks in Poland, it should be also noted, that such protection have a special character because it applies to unregistered marks, and it is an exception to the principle of protecting industrial property rights by the registration process. This requires preserving much care, so that without proper justification, would not depreciate the importance of registering trade mark and it would not reduced the registration to a purely formal procedure that has no importance.

Therefore, the SAC annulled both questioned judgments of the Voivodeship Administrative Court and returned to the VAC for reconsideration in accordance with the conclusions reached and ordered the Polish Patent Office to pay Tiffany & Broadway Inc. Div. of Texpol Corporation 1200 PLN as reimbursement of costs of the cassation compliant.

Meta tags in Polish case law

October 8th, 2009, Tomasz Rychlicki

The French company Marin’s International brought a case before the Court for the Community Trade Marks and Community Designs, located in Warsaw (in Polish: Sąd Okręgowy w Warszawie Wydzial XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych). The issue concerned the use of CTMs Marin’s and Lama by the Polish company Display Flash Poland sp. z o.o., within its website in NOSCRIPT tag. The Court in a judgment case file XXII GWzt 8/09, ruled that the use of someone else’s trademark in website’s metatags infringes trade mark rights of such person, and such behaviour may be also deemed as an unfair competition delict.

I know that I should mention the opinion of the Advocate General Poiares Maduro of 22 September 2009 in joined cases C‑236/08, C‑237/08 and C‑238/08, Google France, Google Inc. v. Louis Vuitton Malletier, Google France v. Viaticum, Luteciel and Google France v. CNRRH, Pierre Alexis Thonet, Bruno Raboin, Tiger, a franchisee of Unicis.

(1) The selection by an economic operator, by means of an agreement on paid internet referencing, of a keyword which will trigger, in the event of a request using that word, the display of a link proposing connection to a site operated by that economic operator for the purposes of offering for sale goods or services, and which reproduces or imitates a trade mark registered by a third party and covering identical or similar goods, without the authorisation of the proprietor of that trade mark, does not constitute in itself an infringement of the exclusive right guaranteed to the latter under Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.

(2) Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that a trade mark proprietor may not prevent the provider of a paid referencing service from making available to advertisers keywords which reproduce or imitate registered trade marks or from arranging under the referencing agreement for advertising links to sites to be created and favourably displayed, on the basis of those keywords.

(3) In the event that the trade marks have a reputation, the trade mark proprietor may not oppose such use under Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94.

(4) The provider of the paid referencing service cannot be regarded as providing an information society service consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the internal market (‘Directive on electronic commerce’).

This is way more interesting if one realizes that almost month ago Google has announced that it doesn’t use the “keywords” meta tag in web search ranking.

Do not argue about copyrights and trade marks or you land in jail

March 14th, 2009, Tomasz Rychlicki

Indeks 73 is a new initiative created and developed on the national level in Poland at the beginning of 2008 by the people of cultural professions. Our aim is to protect freedom of artistic expression and scientific researches guaranteed by the constitution
(…)
Freedom of artistic creation and scientific research, as well as free access to cultural goods, is guaranteed in Article 73 of the Constitution of the Republic of Poland, and on the international level – in the Universal Declaration of Human Rights (article 27).

This was for the begining. You may find more interesting news at indeks73.pl website.

On 10 March, Waldemar Tatarczuk (artist, performer) has sent an alert to the net about the arrest of Zygmunt Piotrowski. Piotrowski is a recognized theoretician on individual concepts of avant-garde art, he combines the art with social and political reality. The artist works at the crossroads of philosophy, visual arts and science (he developed many technical patents).

Indeks 73 learned that Piotrowski’s detention was caused by his refusal to pay the court’s ordered fine to Lew Rywin. Piotrowski argued that his property will not be disclosed to such criminals as Rywin. Of course, the court did not agree with his statement and at the request of Heritage Films (owned by Lech Rywin) ordered Zygmunt Piotrowski to serve 8 days of detention. He should be released on 13 March 2009.

The dispute between Piotrowski and Lech Rywin (Heritage Films) is pending for more than ten years. It has started as a copyright dispute regarding Zygmunt Piotrowski’s creation of word-figurative logotype “Heritage”. Piotrowski created this logo for the Polish company Heritage Promotion of Music and Art. It presented the state court porch of Elizabeth and Christopher Penderecki with “heritage” word included. In 1991, Lew Rywin used this logotype to build the image of the new company, Heritage Films. Zygmunt Piotrowski has brought a copyright infringement case and won. The court’s judgment has forced the Heritage Films company to remove the sign.

Update on March 14, 2009.
It was late when I did the post so I forgot to add something important. Indeks 73 did not learn what was the exact reason that Piotrowski was obliged to pay a fine for Heritage Films.

And as regards courts’ judgments about trade marks including “heritage” word, the Supreme Administrative Court of the Republic of Poland (SAC) has issued two opinions. I have no specific information about civil courts’ rulings. The SAC in a judgment of 14 December 2001, case file II SA 3446/01, clearly ruled.

The English word “heritage” is not a generic term for the services it was registered for, nor does it inform about its properties, quality or usefulness. Therefore “heritage” word can be used as a trade mark.

Just to remind you. Judgments of the Court of Justice of the EC in case C-3/03 P, Matratzen Concord GmbH vs. Office for Harmonisation in the Internal Market (Trade Marks and Designs), [2004] E.C.R. I-3657 and C-421/04, Matratzen Concord AG vs. Hukla Germany SA, [2006] E.C.R. I-2303, have been issued couple of years later. ;)

One may say, that the SAC in a judgment of 12 March 2003, case file II SA 1867/02, provided very obvious holding.

In accordance with the general rules, in the event of a collision between company name (the firm) and trade mark that has been registered with the “later precedence”, the priority shall be given to the right that existed earlier.

Typosquatting and trade mark infringement

October 15th, 2008, Tomasz Rychlicki

There is this case pending Vulcan Golf, LLC v. Google Inc. et al., No. 07 CV 3371 (N. Dist. Ill. June 15, 2007). You’ll have all necessary documents available at justia.com website. Ben Edelman from Harvard University made the whole case much more worse to argue for Google.

Edelman and other lawyers have filed a class action lawsuit representing domain owners who claim the Google Adsense for Domains (AFD) program is assisting in violating trademarks. A hearing is scheduled for as early as next month in which Edelman will ask an Illinois federal judge to allow the case against Google to proceed.

When it comes to trade mark infringement and keywords then all I can say is that European trade mark lawyers are eagerly awaiting for the Court of Justice of the EC to answer couple of important questions. In case C-236/08, Google France and Google, French Cour de Cassation reffered the following questions.

1) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks[1] and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark[2] be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering infringing goods is using those trade marks in a manner which their proprietor is entitled to prevent?

2) In the event that the trade marks have a reputation, may the proprietor oppose such use under Article 5(2) of the directive and Article 9(1)(c) of the regulation?

3) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or the regulation, may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000,[3] so that that provider cannot incur liability until it has been notified by the trade mark proprietor of the unlawful use of the sign by the advertiser?

In case C-237/08, Google France, French Cour de Cassation reffered the following questions.

1) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks[1] be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering goods identical or similar to those covered by the trade mark registration is using those trade marks in a manner which their proprietor is entitled to prevent?

2) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark,[2] may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000, [3] so that that provider cannot incur liability before it has been informed by the trade mark proprietor of the unlawful use of the sign by the advertiser?

In case C-238/08, Google France, French Cour de Cassation reffered the following questions.

1) Does the reservation by an economic operator, by means of an agreement on paid Internet referencing, of a keyword triggering, in the case of a request using that word, the display of a link proposing connection to a site operated by that operator in order to offer for sale goods or services, and which reproduces or imitates a trade mark registered by a third party in order to designate identical or similar goods, without the authorisation of the proprietor of that trade mark, constitute in itself an infringement of the exclusive right guaranteed to the latter by Article 5 of First Council Directive 89/104/EEC of 21 December 1988?[1]

2) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering goods identical or similar to those covered by the trade mark registration is using those trade marks in a manner which their proprietor is entitled to prevent?

3) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark,[2] may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000, 3 so that that provider cannot incur liability before it has been informed by the trade mark proprietor of the unlawful use of the sign by the advertiser?

I may presume that there will be another questions asked, and not only from France.

May 8th, 2008, Tomasz Rychlicki

Adidas Am., Inc. v. Payless Shoesource, Inc., 3:01-cv-01655 (D. Or. Nov. 8, 2001). $305 million judgment. The issue was a trade mark infringement of 3 stripes. So, that’s more than $100m per stripe as Marty Schwimmer has noted. There are some documents related to this case at Marty’s website too. Adidas is very protective when it comes to this sign/mark. As an example you may read cases that were brought before The Court of Justice of the European Communities. Case C-102/07, adidas and adidas Benelux.

First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the requirement of availability cannot be taken into account in the assessment of the scope of the exclusive rights of the proprietor of a trade mark, except in so far as the limitation of the effects of the trade mark defined in Article 6(1)(b) of the Directive applies.

C-408/01, Adidas-Salomon AG and Adidas Benelux BV v. Fitnessworld Trading Ltd., OJ C 304, 13.12.2003, p. 5.

1. A Member State, where it exercises the option provided by Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, is bound to grant the specific protection in question in cases of use by a third party of a later mark or sign which is identical with or similar to the registered mark with a reputation, both in relation to goods or services which are not similar and in relation to goods or services which are identical with or similar to those covered by that mark.

2. The protection conferred by Article 5(2) of Directive 89/104 is not conditional on a finding of a degree of similarity between the mark with a reputation and the sign such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark.

3. The fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to the protection conferred by Article 5(2) of Directive 89/104 where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark. By contrast, where, according to a finding of fact by the national court, the relevant section of the public views the sign purely as an embellishment, it necessarily does not establish any link with a registered mark, with the result that one of the conditions of the protection conferred by Article 5(2) of Directive 89/104 is then not satisfied.

Well, what can I say? Such marks and sign will always bring public controversy. I can unmodestly recommend you my post titled “Non-traditional trademarks in Polish case law” and “Reclaim Magenta“.

Non-traditional trademarks in Polish case law

April 30th, 2008, Tomasz Rychlicki

Last updated on 11 January 2010.

This post was inspired by a question and request I have recieved from my nice friend. I must admit that the Polish case law is not too rich in decisions regarding the issue of non-traditional trade marks, however some judgments are worth mentioning.

Three-dimensional marks

The judgment of the Supreme Administrative Court (SAC) of 29 June 2005, case act signature II GSK 92/05.

The interpretation of articles 4 and 7 of the Act on Trademarks should be made in accordance with article 3(1)(e) of the First Directive 89/104. According to this article, signs which consist exclusively of the shape which results from the nature of the goods themselves shall not be registered or if registered shall be liable to be declared invalid. This regulation should be interpreted in the manner that signs which consist exclusively of the shape of goods shall not be registered if it is proven that basic, functional features of such shape are assigned only to technical characteristics.

This judgment concerned
R-116211

Trade dress

The judgment of the Provincial (Voivodeship/District) Administrative Court (VAC) in Warsaw of 2 March 2006, case act signature VI SA/Wa 1705/05.

I. According to article 30 of the Act on 31 January 1985 on Trade marks (Journal of Laws No 5, item 17 with later amendments), a legal interest to demand the invalidation of a trademark registration is afforded to an entity which derives such right from a competence to fill for trademark registration, use of a trademark or to demand the invalidation of a trademark registration for the sake of the collision with its own rights.
II. There is a presumption of good faith and bad faith has to be proven. There is an assumption that someone is acting in bad faith if he or she has the awareness of discrepancy of the situation with the law or as a result of his or her negligence in knowledge about the legal situation.
III. In accordance with the well established doctrine, practice and case law, a trade mark according to article 7 and article 9 sec. 1 pt 1 and 2 of the Act on Trade marks, should be examined as a whole. It is not allowed to test only one element of the complex sign, for instance the graphic, without taking into the consideration of the word elements of the sign, or doing it insufficient way. Therefore, if the Polish Patent Office examines individual elements of a sign, it should in next, to put them together and to draw the final conclusions.

and the judgment of the Supreme Administrative Court of 20 February 2007, case act signature II GSK 247/06, in which the SAC rejected a cassation complaint brought by the K. Company.

It can not be assumed that in case of word-graphic signs, a word element of such sign has a decisive character because it is easy to remember and to communicate. While assessing the similarity of signs one has to take into the consideration a general impression which compared signs exert on the consumer.

This judgment concerned TERRAVITA trade mark R-142204.

I’m still not so certain if this trade mark (trapezoid box/packaging for a bar of chocolate with characteristic rectangle “window” at the front which allows the consumer to see the texture of the chocolate) should be perceived as “trade dress” as it was discussed by the SCOTUS in its judgment in the case Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). Maybe it is a three-dimensional sign/trade mark? We may discuss.

Single colour

The judgment of the Provincial (Voivodeship/District) Administrative Court in Warsaw of 3 August 2005, case act signature VI SA/Wa 1482/04. This judgment concerned separate Color RED Pantone 485 C for goods in class 30 such as confectionery, chocolate confectionery, sweets.

A single colour is not able by its nature to independently distinguish goods of individual entrepreneurs. But, even if a single colour is devoid of any distinctive character according to article 3(1)(b) of the First Directive, it may acquire such a distinctive character in relation to goods by use of such coulour. This factor should be considered when assessing the registerability of a single coulour as a trademark.

The judgment of the Voivodeship Administrative Court in Warsaw of 31 October 2006, case act signature VI SA/Wa 1420/06. This judgment concerned separate Color RED Pantone C32, IR-803195.

1. While examining whether the rights of protection may be granted, it should be determined whether a sign could serve as a trademark at all. Only after it was decided that a sign could be a trademark, one should examine whether a mark is sufficiently distinctive and therefore to check whether the sign is suitable for distinguishing the specific goods in trade, to designate of which it has been applied for.

2. The lack of distinctive character of a trade mark is considered as the absolute grounds for refusal to trade mark registration, but a sign may acquire distinctive character as a result of use.

3. It is difficult to say that red color combined with different kinds of equipment and tools, or accessories used in construction is something extraordinary, unique and unprecedented, which could stick decisively in the memory and let the consumer individualize the goods in the market among the goods of the same type but originating from different companies.

Composition of colours

The judgment of the Supreme Administrative Court of 23 November 2004, case act signature GSK 864/04. This judgment concerned a trade mark that was filled according to the Madrid system of international registration of marks. The sign was presented as double coulour composition (lower part in orange, top part in white).

According to article 4 sec. 1 and article. 7 sec. 1 of the Act on 31 January 1985 on Trade marks, undefined trademark, which is not represented in one form, does not possess any sufficient ability to distinguish goods.

The judgment of the Supreme Court of 3 June 2009, case act signature IV CSK 61/09. This judgment concerned inter alia trade mark registrations for color trade marks. For instance R-115842 and R-115843.

R-115842 R-115843

Combination of colors can be a protected trademark in Poland.

I will try to update this post everytime I got any interesting judgment. Stay tuned.

April 10th, 2008, Tomasz Rychlicki

An IP licensing agency which is working for the Lockheed Corporation has send C&D letter to John MacNeill and “requested” him to remove his works from TurboSquid website. Those works were professionally made 3D models of B-24 plane. The Equity Management alleged that such works infringes on B-24 trade mark, owned by Lockheed. There is a really good post about this issue on boingboing.net website so I’ll not repeat this news. However, I was interested in the case-law that was cited by Corynne McSherry (staff attorney working for the Electronic Frontier Foundation) as she published a post about her response letter PDF file, in John MacNeill case on eff.org website. One of cited cases was WCVB-TV v. Boston Athletic Ass’n, 926 F.2d 42 (1st Cir. 1991). The Court ruled that

Defendants failed to show that plaintiff’s broadcast with the use of the words “Boston Marathon” created a risk of public confusion that plaintiff’s broadcast had an official imprimatur.

In New Kids on the Block v. News America Pub., Inc., 971 F.2d 302 (9th Cir. 1992), United States Court of Appeals for the Ninth Circuit, held in the judgment written by Alex Kozinski, that the defendant has used “The New Kids On The Block” trade mark

to identify the group and not to imply the group’s endorsement. The court noted that a competitor could even use a rival’s trademark in advertising for profit if the use was not false or misleading and did not implicate the source-identification function of the trademark

Corynne McSherry also mentioned the case Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002) where the Court held that the Found

claim failed because the law of the deceased personality’s domicile did not recognize a post-mortem right of publicity. The court then held that the merchant was entitled to a fair use defense under 15 U.S.C.S. § 1115(b) because the merchant’s use of the name and likeness of Princess Diana was a permissible nominative fair use. The court further held that the false advertisement claim was groundless because the statements in the advertisements at issue were true and the charity fund had no reasonable basis to believe they were false. The court finally held that the award of attorneys’ fees to the merchant was justified and reasonable.

For the comparative approach in a similiar case I’d like to mention about The Court of Justice of the European Communities’s case C-48/05, Adam Opel (OJ C 56 of 10.03.2007, p.4). Adam Opel discovered that a 1:24 remote-controlled scale model of the Opel Astra V8 coupé, bearing the Opel logo on its radiator grille like the original vehicle, was being marketed in Germany. The trade mark holder for Opel mark has also found that toys’ producer is Autec. Opel sued Autec before the Landgericht Nürnberg-Fürth, but interpretation problems arose as regards to article 5(1)(a) and (2), and article 6(1)(b) of the First Directive 89/104/EEC (I always wonder where is the second directive ;) and in the consequence the case landed as a request for the preliminary ruling under Article 234 EC, before the Court. It held that:

1. Where a trade mark is registered both for motor vehicles – in respect of which it is well known – and for toys, the affixing by a third party, without authorisation from the trade mark proprietor, of a sign identical to that trade mark on scale models of vehicles bearing that trade mark, in order faithfully to reproduce those vehicles, and the marketing of those scale models:

– constitute, for the purposes of Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, a use which the proprietor of the trade mark is entitled to prevent if that use affects or is liable to affect the functions of the trade mark as a trade mark registered for toys;

– constitute, within the meaning of Article 5(2) of that directive, a use which the proprietor of the trade mark is entitled to prevent – where the protection defined in that provision has been introduced into national law – if, without due cause, use of that sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark as a trade mark registered for motor vehicles.

2. Where a trade mark is registered, inter alia, in respect of motor vehicles, the affixing by a third party, without the authorisation of the proprietor of the trade mark, of a sign identical to that mark to scale models of that make of vehicle, in order faithfully to reproduce those vehicles, and the marketing of those scale models, do not constitute use of an indication concerning a characteristic of those scale models, within the meaning of Article 6(1)(b) of Directive 89/104.

Update on May 21, 2008.
It looks like Lockheed Martin has withdrawn its claims. More details at eff.org website.

Poland: consent letter is not enough

January 8th, 2008, Tomasz Rychlicki

Plus Warenhandelsgesellschaft mbH tried to register the AZOR trade mark in class 3 in Poland, but the same mark was already registered and had been in force since 1995. Its owner – ORO Produkte Marketing International GmbH – reached an agreement with Plus regarding its registration. However, the Polish Patent Office (PPO) rejected Plus’ trade mark application. A complaint brought by Plus before the Voivodeship Administrative Court (VAC) in Warsaw was also rejected. The Court uphold the PPO’s decision and ruled that the Polish Act on Industrial Property Law provides no exceptions for registration of a mark that is identical to an earlier trade mark, and the goods or services for which the trade mark is applied for or are identical.

The Supreme Administrative Court (SAC) in a judgment of 20 December 2007, case file II GSK 279/07, has confirmed the lower Court’s judgment and ruled that a letter of consent cannot be used as ground to register such mark since the Republic of Poland did not implement Article 4(5) of the First Council Directive 89/104.

November 9th, 2007, Tomasz Rychlicki

My dear friend, great translator and interpreter and a very talented illustrator Artur Zawiasiński has sent me a link to stijlfigurant.nl website. You may also read more comments about the action against T-mobile’s trade mark/service marks at colourlovers.com website.

I would like to add a short legal comment on this whole issue. The US Supreme Court ruled in the case Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), that:

a color may sometimes meet the basic legal requirements for use as a trademark.

The Court of Justice of the European Communities in its judgement from May 6, 2003, in the case C-104/01, Libertel Groep BV v. Benelux Merkenbureau, OJ C 146, 21.06.2003, p. 6, ruled that:

in answer to the questions referred to it by the Hoge Raad der Nederlanden by order of 23 February 2001, hereby rules:

1. A colour per se, not spatially delimited, may, in respect of certain goods and services, have a distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, provided that, inter alia, it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The latter condition cannot be satisfied merely by reproducing on paper the colour in question, but may be satisfied by designating that colour using an internationally recognised identification code.

2. In assessing the potential distinctiveness of a given colour as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought.

3. A colour per se may be found to possess distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of Directive 89/104, provided that, as regards the perception of the relevant public, the mark is capable of identifying the product or service for which registration is sought as originating from a particular undertaking and distinguishing that product or service from those of other undertakings.

4. The fact that registration as a trade mark of a colour per se is sought for a large number of goods or services, or for a specific product or service or for a specific group of goods or services, is relevant, together with all the other circumstances of the particular case, to assessing both the distinctive character of the colour in respect of which registration is sought, and whether its registration would run counter to the general interest in not unduly limiting the availability of colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought.

5. In assessing whether a trade mark has distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of Directive 89/104, the competent authority for registering trade marks must carry out an examination by reference to the actual situation, taking account of all the circumstances of the case and in particular any use which has been made of the mark.