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Archive for: Nice Classification

Trade mark law, case II GSK 1096/13

December 8th, 2014, Tomasz Rychlicki

Dansk Supermarked A/S, the owner of word trade marks NETTO and word-figurate trade mark NETTO R-114747 filed to the Polish Patenet Office a notice of opposition to the final decision on the grant of a right of protection for the word-figurative trade mark NETO R-227788 that was registered for the goods in Classes 7, 11, 19, 20, 21 and services in Classes 35 and 42. The opponent pointed out that the services in Class 35 are identical to these that NETTO trade marks were registered for, and are directed to similar consumers through similar channels. Furthermore, the services in Class 35 are complementary to the goods and services from other classes. Dansk Supermarked A/S also argued that the compared trade marks are very similar. The dominant element of the sign in question is the word “NETO”, which is crucial for the perception of the character, and the figurative element is of secondary importance. The word “NETO” is entirely contained in the opposing signs, therefore the compared trade marks are “substantially similar” and that the average consumer may mistakenly associate the signs, and there is a real risk of misleading the public as to the origin of goods and services.

The owner, Polish company Galicja Tomaszek sp. z o.o., argued that the chain stores NETTO offer both food and industrial goods, and in this case, the opposing sign is used for the determination of the store itself or chain of stores. In contrast, the disputed mark is used to designate the goods.

The Polish Patent Office invalidated the right of protection. The PPO found that trade marks at issue are similar, and pointed out that all the goods in Classes 7, 11, 19, 20 and 21, are covered by the services included in class 35, and relate to the sale of these goods. Galicja Tomaszek sp. z o.o. filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 19 December 2012 case file VI SA/Wa 1808/12 dismissed it. The Court ruled that the term “providing a service” or “service” itself have no material content in the sense that the sign may be placed only on the elements used to provide a particular service, while a trade mark can be assigned to the goods, due to their material nature, and the consumer may directly related to the goods to which a sign is assigned. The similarity of the goods/services happens when the goods (services) covered by the earlier mark and the goods (services) covered by the later mark have the same purpose and method of use. Galicja Tomaszek sp. z o.o. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 18 September 2014 case file II GSK 1096/13 dismissed it.

Trade mark law, case VI SA/Wa 1780/11

June 19th, 2012, Tomasz Rychlicki

The Polish company NTT System S.A. applied for the right of protection for word trade mark NTTonLine Z-330715 for services in Class 35. The PPO noted that the entry in the list of services such as “management of the licensing of goods and services to third parties”, was placed in the trade mark application in Class 35. The PPO ruled that it is a very general term, referring to all goods and services. Meanwhile, according to International Classification of Goods and Services “licensing of industrial property” and “licensing of computer programs” should be classified in class 45. Therefore, PPO asked for clarification of the original term – so as to eliminate any doubt regarding the scope of protection of the trade mark NTTonLine, because the general reference to all goods and services could in fact raise the risk of inclusion of general terms that belong to the different classes. NTT System did not submit any additional documents or corrections and the PPO discontinued the examination proceedings. NTT filed a complaint against this decision, and later withdraw it.

The Voivodeship Administratice Court in its order of 8 December 2010 case file VI SA/Wa 2122/10 was required to examine whether such withdrawal is not intended to evade the law or if it would leave in force a void decision. The Court ruled that that withdrawal was acceptable in this case. NTT filed a cassation complaint, and the Supreme Administrative Court in its order of 9 August 2011 case file II GSK 1127/11 annulled the order of the VAC and returned the case for further reconsideration.

The Voivodeship Administrative Court in its judgment of 5 April 2012 case file VI SA/Wa 1780/11 found that this time NTT System did not request the withdrawal of the complaint, and demanded a hearing. The Company argued that it is not true that the services listed in Class 35 are general in nature, and they need to be clarified, because for all general terms in the Nice Classification are marked with an asterisk, and only such terms should be clarified. Moreover, the contested final decision of the Polish Patent Office violated the law as it was issued by an unauthorized person – an expert not having the appropriate authority to consider this particular case. Such authorization should be granted by the President of the PPO. The Court held that the most important is the recommendation that the particular text appearing in the alphabetical list should be used as the indication of goods or services, not a general term. And the mere fact that a specific good or service are listed in alphabetical order does not affect the individual decision of national industrial property offices on the possibility of registration of the mark for such goods or services. The wording of the list of goods and services must be clear not only for the applicant, but also for third parties who either may submit an opposition to the grant of the right of protection, or simply by applying or using the sign, they wish to avoid a collision with a similar trade mark with an earlier priority. The court considered the request of the PPO that was addressed to the applicant in order to clarify the list of services, as justified. The Court ruled that the President of the Polish Patent Office is empowered to authorize certain persons not only to make decisions on her behalf in certain matters, but also to select of experts or assessors to act in certain cases. The expert examining the case was properly authorized by the President of the PPO. Taking into account all the arguments, the Court dismissed the complaint.

Trade mark law, case VI SA/Wa 517/08

June 20th, 2008, Tomasz Rychlicki

The recent judgment of the Voivodeship Administrative Court (VAC) in Warsaw of 6 June 2008, case act signature VI SA/Wa 517/08 acknowledged that the Nice Classification should be used as an auxiliary tool to decide about of the same kind of goods which is also in the accordance with article 2(1) of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

Subject to the requirements prescribed by this Agreement, the effect of the Classification shall be that attributed to it by each country of the Special Union. In particular, the Classification shall not bind the countries of the Special Union in respect of either the evaluation of the extent of the protection afforded to any given mark or the recognition of service marks.

HIRSCH-POL Sp. z o.o., filed before the Polish Patent Office (PPO) a request for partial cancellation of the trade mark rights for PRYMUS R-144135 trade mark owned by Krzysztof Moska and registered for classes 01, 02, 04, 16, 17, 19, 35 and 39. HIRSCH-POL Sp. z o.o. was claiming the priority of an earlier registered trade mark PRYMUS R-136008 in class 2. The PPO dismissed the request. HIRSCH-POL logged a complaint to the Voivodeship Administration Court in Warsaw.

The Court overruled the contested decision, finding that the PPO did not establish the scope of a protection for the PRYMUS sign and the Nice Classification is only an auxiliary tool to decide whether goods are of the same kind. Following the judgment, the PPO cancelled Moska’s trade mark in classes requested by HIRSCH-POL. This time Mr Moska lodged a complaint before the VAC, claiming violation of administrative procedure’s rules and violation of the rule of “certainty and confidence of State’s bodies”. The Voivodeship Administration Court in Warsaw held that the contested sign may lead to consumers’ confusion with regard to the origin of goods and that its previous conclusions which applied to the Nice Classification were correct.

Trade mark law, case II GSK 698/08

April 28th, 2008, Tomasz Rychlicki

On 15 April 2003 the Polish Patent Office (PPO) received a request filed by Kosmetyczno Lekarska Spółdzielnia Pracy IZIS from Warsaw to declare the lapse of protection rights for the AMBER R-98839 trade mark registered for Evyap Sabun,Yag,Gliserin Sanayi Ve Ticaret A.S., Istambuł (Turkey) in class 3 for goods such as bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. This trade mark was registered on 19 November 1997, with priority date as of 9 February 1994. The request was based on non-use of AMBER trade mark.

IZIS justified its legal interest in requesting the PPO to decide on the lapse of the right of protection because it is the manufacturer of products in class 3 (cosmetics: creams, cosmetics milks, lotions, tonics) that are labeled with AMBER sign and because of the fact that the Polish Patent Office rejected IZIS’s request of 10 April 2003 for invalidation of the right of protection of the disputed trade mark, and held that the AMBER R-98839 trade mark was an obstacle to the application for registration of IZIS word trademark AMBER – IZIS, Z-161082.

During the proceedings before the PPO the Turkish company submitted evidence of actual use of the disputed trade mark only in respect of soaps. On 5 April 2003 the PPO ruled on the lapse of the right of protection for AMBER R-98839 for goods in class 3 such as “cosmetics”. The Turkish company filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw. The VAC rejected the motion in its decision of 10 March 2008, case file VI SA/Wa 1811/07. The Court held that the term “cosmetics” covers a wide range of cosmetics products intended for various use: industrial, cleaning, protective or fragrance and beautification. The fact that soaps are within the scope of “cosmetics” did not justify the findings of an actual use of the disputed trade mark in respect for all cosmetics where the mark is actually used only in respect of soaps, which were, moreover, identified by the applicant in the description of goods right next to cosmetics. The court also noted that according to article 169(6) of 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 subsequent amendments.

Where a proceeding for the declaration of the right of protection lapsed is initiated, the burden of proof that the trademark has been used or that serious reasons for non-use of the trade mark exist shall be on the holder of the right of protection.

Or as the Court said, passivity during the burden of proof is the problem of the trade mark holder. In this case, the Turkish company during proceedings before the Polish Patent Office has not disclosed the existence of valid reasons for non-use, for any goods except soap. The company from Turkey filed a cassation complaint before the Supreme Administrative Court (SAC). The SAC in its judgment of 3 February 2009, case file II GSK 698/08 held that the Nice Classification of goods is not conclusive as to the nature of goods belonging to each of the classes. It has only an auxiliary nature during the process of formulation of lists of goods for signs that were applied for to the Patent Office as to organize the goods and services in accordance to its characteristics.

In case of a dispute before the Patent Office in proceedings for the declaration of lapse of the rights of protection for trade mark as regards to the part of the goods, as a result of non-use of a registered trade mark, it is required to assess the actual attribiution of the disputed goods to a category, regardless of how it the list of these goods was drawn up. In SAC’s opinion, the Polish Patent Office, followed by the first instance court, have failed to analyze the similarity of the goods for which AMBER trade mark has been registered for and their attribution to a given category. Both the PPO and the VAC did not answer the most important question do soap and cosmetics belong to the same category of goods? It was required by the PPO to assess what is the actual attribution of the disputed goods to what category, regardless of how the list of these goods was done. If you lodge a complaint on the decision of the Polish Patent Office, the first instance court (the Voivodeship Administrative Court in Warsaw) is obliged to review the decision in terms of its compliance with the substantive law and rules of conduct. The SAC held also that the PPO did not examine sufficiently the question of whether there was the important reasons for non-use of a registered mark, and this was due to the ongoing proceedings on the invalidation of the right to registration of the trade mark. The Supreme Administrative Court annulled the contested judgment, and ordered the Voivodeship Administrative Court in Warsaw to reconsider the case.