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Archive for: Art. 6bis Paris Convention

Trade mark law, case II GSK 883/11

September 3rd, 2012, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 827/10“. INTER GLOBAL decided to file a cassation complaint against the judgment of the Voivodeship Administrative Court of 29 October 2010 case file VI SA/Wa 828/10 that upheld the decisions of the Polish Patent Office of 16 October 2009 case no. Sp. 449/05, in which the PPO invalidated the registration of the word-figurative trade mark TEMPO R-104245 because it was applied for in bad faith.

R-154752

The Supreme Administrative Court in its judgment of 9 May 2012 case file II GSK 883/11 dismissed the appeal. The Court noted that there was some sense in INTER GLOBAL’s legal arguments that there is a need to provide legal certainty in a situation where the disloyal agent used the trade mark of a foreign entrepreneur who was conscious of this fact, even if the trade mark was applied for registration in bad faith. However, the Court held that the protection of property rights against actions taken in bad faith is so extended that it will undoubtedly take precedence over considerations on legal certainty resulting from the long-term use of the mark. This rule will not be changed by the argument that the disloyal agent promoted the foreign trade mark and incurred significant expenses. The Polish legislator adopted the ban on registration of signs that were applied in bad faith as one of the main principles of industrial property law, so there is not any possibility of legalization of any unethical actions, even qualified, because characterized by bad faith of professional entities that are involved in business activities. Because of the legal certainty of market turnover, a foreign rightful owner of a trade mark used by another entity, will not be able to demand the invalidation of or to oppose the use of a later trade mark, in a situation in which the use of the later sign has been knowingly tolerated for a limited time, at least of 5 consecutive years, unless the application for registration of the later mark was made in bad faith. At the same time it should be noted that the registration of a trade mark that belongs to foreign trade partner by his disloyal agent without the consent is not always deemed as an act of bad faith. Although the cases in which an agent acting without the authorization of the proprietor will not be acting in bad faith are veru limited, however, such situations may occur. The court also said that the acceptance of INTER GLOBAL’s argument would lead to a situation of unequal treatment of foreign entrepreneurs compared to those operating in Poland. If, as the Polish Industrial Property Law rules only apply to relationships between a Polish agent and foreign entrepreneur, it would allow for an unlimited in time option of invalidation of the registered trade mark that was applied in bad faith (that option lapse after 5 years of the use of such mark, with the knowledge of a foreign entrepreneur), in the situation of the agent and a company operating in Poland. The company operating in Poland and being in the agency relationship with another entrepreneur (agent) could, therefore request for the invalidation of the signs registered by the latter in bad faith at any time. The foreign entrepreneur represented by a Polish disloyal agent would be deprived of such a right.

Trade mark law, case VI SA/Wa 2458/11

July 27th, 2012, Tomasz Rychlicki

On 6 September 2007, the Polish Patent Office granted the right of protection for the word trade mark PRESTIGE OLIMPIC R-197858 for goods in Class 19 such as non-metallic construction materials, timber liners, bonded and not bonded floorboards, flooring lumber, sawn wood, planed and machined wood, construction wood, laminate flooring. This sign was applied for by the Polish company Barlinek S.A. The International Olympic Committee filed a notice of opposition to the decision of the Patent Office. The IOC noted that the name INTERNATIONAL OLYMPIC COMITEE is used since 1894, and the questioned trade mark causes the violation of its property rights and personal interests, in particular the right to the company name. In addition, the IOC claimed that the sign PRESTIGE OLIMPIC is similar to the CTM THE OLYMPICS no. 002827632, registered with the earlier priority, which may cause a risk of consumers confusion. Barlinek S.A. did not agree with such arguments and argued that both trade marks are completely different. The Company pointed out that the goods in Class 19 that are marked with the sign THE OLYMPICS have not been introduced on the Polish market.

The Polish Patent Office in its decision of 6 December 2010 no. Sp. 345/09 dismissed the request. According to the PPO, the words “Olympic” and “Olympics” are similar, but without prejudice to the similarity of signs. The PPO ruled that in this case, the recipients of goods are specialists in the construction industry, who are buying all the supplies at special stores and warehouses or directly from the manufacturers. Therefore, they are deemed as people paying bigger attention, as professionals, to the goods that they purchase. Such professional customers are well-versed in quality, product names and parameters as they are interested and will pay a special attention to who is the manufacturer of the goods.The IOC filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 February 2012 case file VI SA/Wa 2458/11 dismissed it. The Court held that the PPO ruled correctly that multiple signs and trade marks are used as the determination of the Olympic Games. However, no evidence was submitted that the sign THE OLYMPICS is being used in relation to the Olympics. The owner of the CTM did not show the connection between the CTM and any other goods. The sign THE OLYMPICS cannot be deemed as reputed trade mark only because its translation to Polish means Olympic games or Olympics. It is necessary to demonstrate the link between the mark and the goods and/or services. Therefore, the Court decided that the reputation has not been proven. Both signs are written in standard fonts, without any particular distinguishing features, so the same way they are written does not cause that any of the elements of these characters is predominant. The PPO correctly concluded that, despite the similarity of words in the second position in both characters, it cannot be said that the trade marks are confusingly similar. The judgment is not final. The IOC filed a cassation complaint.

Trade mark law, case II GSK 608/09

July 13th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 19 March 2009 case file VI SA/Wa 1888/08 ruled that the consequence of the transfer of trade mark rights to another party, is that its previous owner is not allowed to continue to invoke the claims of the infringement of these trade marks. However, such a possibility is not excluded if the assignment of the trade mark rights will include appropriate provisions authorizing the previous owner of the trade mark to continue proceedings in which it claimed it has rights to assigned trade marks.

R-149940

The Supreme Administrative Court in its judgment of 13 May 2010 case file II GSK 608/09 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that at both the opposition proceedings as referred to in article 246 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 of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, that served as the basis for the decision to refuse to grant a right of protection, and subsequent proceedings before the Polish Patent Office under litigation for invalidation of a right of protection, due to the recognition by the proprietor of a trade mark that the opposition is to be unfounded, the applicant who wants to support the opposition does not have to show the legal interest.

Article 246
1. Within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right in registration.
2. The opposition referred to in paragraph (1) may be filed on the same grounds, on which a patent, a right of protection or a right in registration may be invalidated.

This case concerned the invalidation proceedings of the trade mark CARLO BOSSI R-149940 that was registered for goods in Class 3 by KIVI Dr Krzysztof Słoń from Izabelin Laski.

Trade mark law, case II GSK 247/06

August 11th, 2007, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 1705/05“. This judgment concerned the figurative trade mark TERRAVITA R-142204. The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 247/06 dismissed a cassation complaint brought by the K. Company.

R-142204

The Court ruled that it cannot be assumed that in case of word-figurative signs, a word element of a such sign has a decisive character because it’s 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. 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 (3D).