Archive for: Art. 6bis Paris Convention

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 trademark 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.

The Supreme Administrative Court in its judgment of 13 May 2010 case file II GSK 608/09 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.

R-149940

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 CARLO BOSSI R-149940 trade mark owned by KIVI Dr Krzysztof Słoń from Izabelin Laski.

Categories: Art. 164 IPL | Art. 246 IPL | Art. 255 IPL | Art. 315 IPL | Art. 6bis Paris Convention | bad faith | legal interest | Paris Convention | Polish Supreme Administrative Court | trade mark invalidation | trademark law.

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“. 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. This judgment concerned TERRAVITA trade mark R-142204.

R-142204

The Court ruled that it cannot 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. 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).

Categories: Art. 164 IPL | Art. 315 IPL | Art. 6bis Paris Convention | Art. 8(1) TMA | Art. 9(1)(i) TMA | distinctive character | non-traditional trade marks | Paris Convention | Polish Act on Industrial Property Law | Polish Act on Trade marks | Polish Supreme Administrative Court | trade mark examination | trade mark invalidation | trademark law | US law.