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Trade mark law, case VI SA/Wa 2519/10

June 6th, 2011, Tomasz Rychlicki

On 10 March 2006, Red Bull GmbH applied for the color trade mark Z-307435. The trade mark application included the following description “a mark consists of the color blue (2/4/C) and silver (877 C) that fill half of a sign”. However, the company did not specify how both colors fill the applied trade mark, i.e. whether horizontally or vertically. In the decision on the grant of the right of protection that was issued of 2008, the PPO indicated only two categories of the Vienna Classification: 29.01.2004 and 29.01.2006. In its resolution of 2009, the PPO decided to correct the decision as the so-called obvious clerical mistake. The Polish Patent Office justified its resolution based on reproductions of the trade mark that were attached to the trade mark application Z-307435. The PPO decided that the applied trade mark was a figurative one and noted that the trade mark was vertically divided into two parts. The PPO ruled that the category 25.05.2001 (backgrounds divided vertically into two parts) should be also added, because even the applicant stated that the colors fill in half, and presented relevant reproductions of the sign, where one can clearly see two rectangles placed side by side. The PPO added also the category 04.26.2002 (rectangles).

Z-307435

Red Bull filed a complaint against the resolution of the PPO before the Voivodeship Administrative Court in Warsaw. The Company claimed that its trade mark should not be defined in the PPO’s decision as a figurative, but as an abstract colorful trade mark, which accurately reflects its true nature. Red Bull argued that the Polish Patent Office erred in applying categories of the Vienna classification, since the application concerns an abstract colorful sign. Consequently, it was correct to include in a trade mark application Z-307435 only a category that was corresponding to the colors. Red Bull claimed that the Polish Industrial Property law and Article 15(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) allow for the registration of combinations of colors in the Republic of Poland.

The Voivodeship Administrative Court in Warsaw in its judgment of 21 April 2011 case file VI SA/Wa 2519/10 overturned the questioned resolution and held it unenforceable. The VAC ruled that both the doctrine of law and case-law stand on a restrictive view that the admissibility of correcting “clerical and accounting mistake/miscarriage” is determined by the premise of “obviousness” of the mistake. The “obviousness” of a clerical, accounting or another mistake should either result from the nature of the mistake or from the comparison of a decision with its justification or with the content of the request, or other circumstances. An obvious mistake is deemed as an apparent, contrary to the goal, deliberate misuse of the word, apparently erroneous spelling or an omittment. The Court held that the Vienna categories added by the PPO defined the shape of a sign, of which there was no mention in the trade mark application. So, the PPO “clarified” the content its decision of May 2008 by pointing to the shape of the trade mark applied for. By describing the form of a reproduction attached to the trade mark application, the PPO referred to a figure of rectangle and consequently attributed such a form to the trade mark at issue. Meanwhile, a reproductions has its own form, that is independent of the form of the trade mark itself. A form, shapes and dimensions of the reproductions (photographs or photo-copies of a trade mark) are defined in § 9 of the Regulation of the Prime Minister of 8 July 2002 on filing and processing of trademark applications. The Court found that there was no reason to draw conclusions about the shape of the trade mark only on the basis of the rectangular shapes of the reproduction included in the trade mark application Z-307435.

Trade mark law, II GSK 578/10

May 28th, 2011, Tomasz Rychlicki

This is a sequel to a story described in “Trade mark law, case Sp. 10/08“. In July 2009, the Polish Patent Office invalidated the right of protection for the trade mark DAKAR R-174205 that was registered for goods in Classes 3, 27, 37, after considering the case on the basis of rich evidence supplied by both parties.

The PPO recognized inter alia the special nature of the opposed trade mark DAKAR IR-606861, that wasregistered for goods in Classes 4, 9, 12, 14, 16, 18, 21, 22, 24, 25, 26, 28, 30, 32, 34 and 41, which in addition to its traditional function of determining the origin of goods, is also the name of the famous rally raid. In explaining its position, the PPO used arguments on a function of a trade mark known as the “merchandising function” and cited D. Keeling, Intellectual Property Rights in EU Law: Free movement and competition law, Oxford, 2003. When examining the circumstances of the case, the PPO concluded that DAKAR IR-606861 trade mark is a reputed one. The PPO pointed to the existing methods for assessing the reputation – the absolute and relative. The first method takes primarily into account the percentage of a certain degree of knowledge of the trade mark on the market (as established by the Voivodeship Administrative Court in Warsaw in its judgment of 8 August 2007, case file VI SA/Wa 757/07). The relative method, in addition to knowledge of the trade mark, emphasizes other criteria, including market share in terms of quantity and value of goods sold, the scope and length of the advertising of the product marked with the sign, territorial and temporal scope of the use of the trade mark, licenses granted, the quality of the goods, the value of a sign in the assessment of independent financial institutions, the size of the expenditure incurred in connection with the promotion of the trade mark and the relationship to the price of substitute goods. Public opinion polls, prizes and awards, publications, press releases, rankings, reports, invoices and other business records, and various promotional materials can serve as evidence. The PPO cited the judgment of the COJ of 14 September 1999 in C 375/97, General Motors Corporation, the judgment of Supreme Administrative Court of 21 November 2006, case file II GSK 181/06 and the decision of OHIM of 25 April 2001 in case R 283/1999-3. See also “Trade mark law, case II GSK 506/07“.

When referring to the transfrontier nature of the reputation of a trade mark, the PPO found that the Paris-Dakar rally, although it takes place outside the Polish borders, has many fans, as evidenced by the data on viewing TV programs on the rally – from 550000 to over 1200000 people, which according to the PPO, proved a high popularity. The PPO cited the judgment of the Voivodeship Administrative Court in Warsaw of 8 November 2005 case file VI SA/Wa 845/05 (VALENTINO) and the judgment of VAC of 13 March 2006, case file VI SA/Wa 1626/05 (LEXUS). See also “Trade mark law, case VI SA/Wa 845/05” and “Trade mark law, case VI SA/Wa 1626/05“. When deciding on the unfair advantage, the Polish Patent Office found that in this case, the Polish company will be able to count on the positive reaction of customers without spending too much money on the promotions, because they will buy the goods by associating them with the sign of the French company and consequently with the rally organized by this company.

The Polish company DAKAR from Krasne filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in a jugment of 29 December 2009, case file VI SA/Wa 1938/09, ruled that the word Dakar also means the capital city of Senegal, and such argument escaped PPO’s attention during the analysis of all the facts and evidence gathered. In this aspect this sign also fulfills political and economic role. Therefore, the name of Dakar has long been known as an exotic name of the city and it should not be attributed exclusively to one company. The VAC anulled the Polish Patent Office’s decision and decided that the decision was not subject to execution. Paris Dakar filed a cassation complaint.

The Supreme Administrative Court in its judgment of 25 May 2011 case file II GSK 578/10 overturned the questioned judgment and sent the case back for reconsideration. The SAC ruled that given the nature of Paris-Dakar business, the PPO properly established the reputation of the trade mark DAKAR IR-606861. The SAC did not agree with the criteria for assessing the reputation of a trade mark that were adopted by the VAC. The Court ruled that the reputation cannot be examined so strictly because organization of sports events is a specific activity and the reputation associated by its trade mark is also conveyed by the media.

Trade mark law, case II GSK 425/09

May 7th, 2010, Tomasz Rychlicki

On 30 August 2004, the Polish Patent Office registered word-figurative trade mark Ravago R-154724 to Walter Breitengraser. The Polish company RESINEX Sp. z.o.o. submitted a request for invalidation of the right of protection, arguing that Mr Breitengraser has applied for the registration in violation of RESINEX personal and economic rights arising from the rights to the name Ravago and in violation of good customs. Resinex also claimed that the application for the disputed trade mark was made in bad faith because Walter Breitengraser was the president of the company acting as an agent for RESINEX.

R-154724

The Patent Office invalidated the right of protection for Ravago R-154724 trade mark. The PPO followed the rule that in the event of a conflict between the right of protection for a trademark and personal right/interest, including the right to business/company name, the priority is to protect the personal interest. The PPO also pointed out that article 8 of the Paris Convention does not constitute independent grounds for the protection of trade names, and therefore a request for its protection must be dealt with under the provisions of national law. The PPO also noted that it is established rule in the legal doctrine and case law, that the registration of a trade mark, which is identical to a name of other company, that was used by this company prior the registration of a questioned trade mark, affects the personal interests of this company.

The complaint filed by Walter Breitengraser was rejected by the Voivodeship Administrative Court in Warsaw in a judgment of 4 November 2008, case file VI SA/Wa 1324/08.

The Supreme Administrative Court in a judgment of 23 February 2010, case file II GSK 425/09 rejected the cassation complaint and held that the presumption of good faith, as defined in article 7 of the Civil Code – CC – (in Polish: Kodeks Cywilny) of 23 April 1964, Journal of Laws (Dziennik Ustaw) No. 16, item 93, with subsequent amendments, is the presumption, to which the provisions of Article 234 of the Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, published in Journal of Laws (Dziennik Ustaw) No. 43, item 296, with subsequent amendments, refers to. Under this provision, the presumption laid down by the law (legal presumption) binds the court and may be rebutted, however, whenever the law does not preclude this.

Article 7
If the Act makes the legal consequences dependent of good or bad faith, the existence of good faith is presumed.

This provision has the auxiliary use in all administrative and court-administrative proceedings. There is no rule of law that would exclude the possibility of presentation of the proof of the existence of bad faith.

Trade mark law, II GSK 298/07

March 19th, 2008, Tomasz Rychlicki

In 2000 the PHU Makroterm K. Wąchała & A. Wąchała applied for the registration of the figurative and word mark MAKROTERM in classes 6, 9, 11 and 42. The Makro Cash and Carry company, who applied for the registration of the figurative and word mark MAKRO in classes 1–45 on 22 March 2000, opposed to the registration. Upon finding the observations groundless, the case was then decided by the Polish Patent Office (PPO).

Makro Cash and Carry claimed that the disputable mark imitated the MAKRO mark, used its renown and infringed the company’s right to a company name. Makroterm in turn said there was no likelihood of confusion since the disputed mark did not use the renown of the MAKRO mark because of the fact that Macro Cash and Carry failed to prove the MAKRO mark had been renowned. The Makroterm representative also said the MAKRO mark had not been universally known.

The PPO overruled MAKRO’s opposition. It decided that in assessing similarity one should not focus solely on one element – the “makro” word. It also said the MAKROTERM mark was one word combining the “makro” and “term” words into an original name that moreover had been put in a colourful design. According to the Office both marks brought about different associations in the minds of the relevant public. It decided that the marks themselves differed and did not examine similarity in goods offered by the companies. The Office also pointed out that the provided advertising materials concerned only the MAKRO CASH AND CARRY mark. With regard to the infringement of the right to a company name it decided the name was a compound one so there could not have been any infringement.

Makro Cash and Carry filed an appeal against the decision of the Polish Patent Office. It read that the Office had not assessed the similarity of goods offered by both companies and with identical goods the criteria for assessing similarity of marks are much stricter. Makro Cash and Carry also said the Polish Patent Office assessed only the differences but it should have assessed similarities.

Makroterm in turn underscored that the universal recognition of the MAKRO sign had not been adequately demonstrated and that the mark had been recognized by a half of the relevant public. It also questioned the research commissioned in 2006 by the MAKRO company.

The Voivodeship Administrative Court (VAC) in Warsaw, in a judgment of 22 March 2007, case file VI SA/Wa 1325/06, rejected the appeal. The Court held that the PPO had already compared the marks with regard to all three planes and decided that the marks bore fundamental differences. It decided that the “makro” word was a common one and had little distinctive value. Apart from that it found the “term” word much more distinctive, which together with colourful design of the MAKROTERM mark made both marks different.

MAKRO filed a cassation appeal to the Supreme Administrative Court (SAC). The Supreme Court in the judgment of 15 January 2008, case file II GSK 298/07 fully agreed with the earlier judgement of the Voivodeship Court and the decision of the Polish Patent Office. It also decided there was no similarity between the marks that would lead to a confusion neither on the phonetic, nor conceptual, nor figurative plane. The mark also had not infringed the appellant’s right to the name of his company.

Trade mark law, case II GSK 173/06

November 8th, 2006, Tomasz Rychlicki

On 10 December 2003, Eska Nord Sp. z o. o. requested the Polish Patent Office to decide on the lapse of the right of protection for “Radio 73,2 Fm ESKA” R-98909 trade mark due to the non-use. The applicant explained that since 1993 it operates as a commercial radio station that broadcasts its program in the Tri-City region (Gdańsk, Sopot and Gdynia) and the surrounding area, using the ESKA-NORD brand. The applicant has claimed its legal interest (locus standi) from the fact that the District Court in Gdańsk issued on 1 August 2003 an order prohibiting Radio ESKA S.A. the broadcasting at radio frequency 94.6 MHz in Gdynia and 90.7 Mhz in Gdansk, and prohibiting radio broadcasting and advertising under the names Eska and Eska Trójmiasto.

R-98909

Radio Eska S.A. sought to dismiss the request and provided the correspondence with the National Broadcasting Council on the use in 1999, of the questioned trade mark in the registered form. The company explained also that it ceased using in “73.2” number in the questioned sign as it was justified because it changed the broadcasting frequency under the Regulation of the Minister of Communications dated 16 December 1999 on the frequency allocation and frequency ranges in the Republic of Poland and the conditions of their use Official Journal No 109, item 1252.

The PPO its decision of 21 February 2005 dismissed the request and pointed out that timeframe to be considered whether disputed trade mark was used and in what form includes the period of 5 year, i.e. between dates of 10 December 1998 and 10 December 2003.

The Voivodeship administrative Court in Warsaw in its judgmen of 7 February 2006 case file VI SA/Wa 1749/05 dismissed the complaint. The Court, pointed out to the fact that the use of the trade mark in broadcasted programs and in correspondence was the use in the course of trade and it met the requirement of genuine use as referred to in the IPL. The Court also noted that under Article 19(1) of the TRIPS the important reasons of the non-use is justified, are import restrictions or other government requirements for goods or services protected by a trademark.

The Supreme Administrative Court in its judgment of 10 October 2006 case file II GSK 173/06 held that the use of a trade mark in a form that differs from that for of a trade mark for which it was granted a right of protection, but in elements which do not alter its distinctive character, is also deemed as the genuine use. The SAC ruled also that there was the use of the trade mark in the form of RDS (Radio Data System) during the broadcast of radio programs and within a website available at eska.pl, presenting the logo of the station. In the first case while listening to the station with a radio equipped with RDS there were presented verbal communications, including communication with the station name (in this case: Radio Eska).