In June 2005, Societe Des Produits Nestle S.A asked the Polish Patent Office to make a decision on the lapse of the right of protection for “3in 1” R-90234 trade mark owned by “MOKATE” sp. z o.o. from Zory. The request was based on article 28(1) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with later amendments.
The right deriving from registration of a trade mark shall expire if the person entitled has not used the mark within a period of three consecutive years in the Republic of Poland.
The request was also based on article 169(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.
1. The right of protection for a trade mark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exist,
(…)
2. In the cases referred to in paragraph (1), the Patent Office shall make a decision on the lapse of the right of protection for the trade mark at the request of any party having a legitimate interest therein.
The request was based on non-use of “3 in 1” trade mark. Mokate filed a motion asking the PPO to reject Nestle’s request. The motion was based on the lack of legitimate interest on Nestle’s side. The PPO agreed with Mokate’s argument. Nestle filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in its judgment of 3 December 2007, act signture VI SA/Wa 1036/07 rejected Nestle’s complaint. The company filed a cassation complaint to the Supreme Administrative Court. The SAC in its judgment of 12 March 2009, act signature II GSK 774/08 held that conditions of legitimate interest are based on two levels — procedural — because it is justifying the initiation of administrative proceedings in a particular matter and “substantive”, as it results from the provisions of the law that apply to certain rights and obligations of a person (legal or natural). Although the substantive law is the source for the legitimate interest but the legal interest as a condition that justfies the initiation of the procedure for declaration on the lapse of the right of protection for the trademark is primarily a category of administrative procedure – one of the principles of this proceedings as to its proper initiation. The cassation complaint was rejected.
The SAC ruled also that it was uncontested that the First Council Directive left Member States free to establish procedural rules. The requirement of legitimate interest included in article 169(2) the IPL only entitles a party to initiate the administrative proceedings on the lapse of the right of protection for a trade mark, but does not guarantee such applicant that the PPO will issue a decision that is favourable to him, because the PPO shall issue a decision on the lapse of the trade mark rights if it finds the fulfilment of the substantial prerequisites to the lapse, and not the infringement of the legitimate interest. Since then the provision of article 169(2) are only applicable only to a right to file a request for a decision on the lapse of the right of protection for a trade mark for the reasons referred to in section 1 of article 169 being the substantial prerequisites, the requirement to demonstrate a legitimate interest can not be understood as an additional substantial prerequisite for deciding on the lapse of trade mark rights. Such assessment is not changed by the fact that, as the court already stated, the legitimate interest is the normative category of the substantive law.
In the Polish administrative law the legitimate interests requirement creates the concept of a proceedings party. This issue has been dealt similarly in the law of industrial property, including a prerequisite to request the Polish Patent Office to take a decision declaring the right of protection for the trade mark.
The legitimate interest prerequisite has two grounds – procedural because it justifies the initiation of the administrative proceedings in a particular case and substantive, because it results from the provisions of substantive law that apply to certain rights and obligations of an entity. Although a source of the legitimate interests lays in the substantive law, the legal interest as a condition requesting the PPO to issue a decision declaring on the lapse of the right of protection for the trade mark lapsed is primarily a category of administrative procedure – one of the principles of this proceeding as to its proper initiation.
The issues on legal interest are both regulated in the procedural law (including the administrative proceedings that apply to trade mark cases) and these are also the normative category of the substantive law. The source of the legal interest is the substantive law. If the source is the substantive law then the Directive should apply. However the SAC consistently refuses to refer this matter to the Court of Justice.
See also “Trade mark law, case II GSK 309/07“.