Archive for: Art. 6ter Paris Convention

Trade mark law, case II GSK 544/12

July 29th, 2013, Tomasz Rychlicki

On December 2010, the Polish Patent Office refused to grant the righ of protection for the word-figurative trade mark Geo Globe Polska Z-359999 applied for the Polish company GEO GLOBE POLSKA sp. z o.o. sp. k.a. The PPO decided that according to the provisions of Article 131(2)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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, it is not allowed to grant the right of protection for signs which include the name or abbreviation of the Republic of Poland, if the applicant has not shown entitlement, in particular the permission of the competent authority of the State, to use the trade mark with such element.

2. A right of protection shall not be granted for a sign, if:
(ii) it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organisations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organisations performing activities in vital public interests, where these organisations’ activities extend to the entire territory of the State or to a substantial part thereof, unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organisation, to use the sign in the course of trade,

The company argued that the name “Polska” is not mentioned among the above conditions, and that Geo Globe Polska has an established position in international business. The company argued that it has tried to obtain permission from the competent authority, but it did not succeed, which in its opinion indicates that there is no legal basis to issue the relevant permit. The Chancellery of the Prime Minister and the Office of the President of the Republic of Poland issued statements that the prohibition on use of the name or abbreviation of the Republic of Poland is absolute. Geo Globe Polska filed a complaint against this decision. The company claimed that the PPO should make a literal rather than a broad interpretation of the provisions of IPL. Geo Globe Polska argued that many business entities in Poland are using the term “Polska”.

Z-359999

The Voivodeship Administrative Court in its judgment of 22 November 2011 case file VI SA/Wa 1749/11 dismissed it. The VAC held that it is obvious that the official name “Rzeczpospolita Polska” (Republic of Poland) includs the element “Polska”. Thus, it can be regarded as an abbreviation of the name of the country. The abbreviation “Rzeczposoplita” has constitutional status, i.e. it is included in the Preamble of the Constitution of the Republic of Poland, and its second element, whether in the Polish language or in translation into other languages, is the distinguishing element of the country’s name, and it’s commonly used at international meetings, competitions, including sports events. Moreover, even the Supreme Administrative Court in its judgment of 9 March 2005 case file I GSK 1423/04 published in LEX No. 186863, held that the protection is also afforded for the abbreviations in the form of the ISO 3166 standard for country codes, such as ID or PL. In another judgment of the Voivodeship Administrative Court in Warsaw of 23 March 2007 case file VI SA/Wa 2184/06, the Court held that the name “Poland” is not sufficiently distinctive. The word “Poland” is the English name of the Republic of Poland, and the Polish Patent Office rightly pointed in this case, that even for people who do not know the Polish language, the term “Poland” will always be associated with the country, and not to a specific entrepreneur. The Court also noted that the provisions of Article 6 ter point 1a) of the Paris Convention and Article 7(1)(h) and (i) of the Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark should be taken into account. The Court ruled that the protection of symbols under Article 6ter of the Paris Convention is absolute and applies to all goods and services. It concerns the symbols of particular public interest.

The Supreme Administrative Court in its judgment of 23 July 2013 case file II GSK 544/12 dismissed the cassation complaint.

Categories: Art. 131(2)(ii) IPL | Art. 6ter Paris Convention | company name or firm | Paris Convention | personal rights or interests | Polish Act on Industrial Property Law | Polish courts | trade mark refusal | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 1156/11

September 25th, 2012, Tomasz Rychlicki

The European Commission filed a notice of opposition to the decision of the Polish Patent Office on the grant of the right of protection for the word-figurative trade mark euro SKLEP R-180808 that was applied for by the Polish company Euro Sklep S.A. from Bielsko Biała. The EC said that the trade mark contains an imitation of the European Union flag because it has five distinctive yellow stars (mullets) arranged in an arc (part of a circle) on a blue background – which obviously violates the official symbol of the European Union. Euro Sklep argued that the opposition is unfounded, because the argument that the trade mark is an imitation symbol is an obvious abuse of the law by the EC, since the examination of signs is to be assessed as a whole, and not by attributing the illusory similarities. The Polish Patent Office invalidated the right of protection. According to the PPO, the average consumer who sees the mark with prominent yellow sign EURO accompanied by five-pointed stars in a semi-circle, will associate it with the flag of the European Union. The PPO pointed out that the use of the EURO caption, as well as graphic elements in the form of a bird or incomplete number of stars, does not rule out the conceptual similarity, since use of the word euro as the dominant element of the mark may exacerbate the association of the recipient that he has to deal with an institution agenda of the European Union. Euro Sklep filed a complaint against this decision and noted that in this case the PPO was not dealing with registration of the flag of the European Communities/European Union as a trade mark, but at most, it would be its imitation from a heraldic point of view. However, the PPO did not properly explain this issue. The Company noted that the imitation prohibited under Article 6ter of the Paris Convention is narrower in scope than an imitation, which normally is considered to be unacceptable between the trade marks. According to Euro Sklep, this view is particularly justified because very often the National flags and emblems contain items commonly used, in particular those relating to flora and fauna, such as lions, bears, flowers, etc., which must remain in public domain for free use.

R-180808

The Voivodeship Administrative Court in its judgment of 7 September 2011 case file VI SA/Wa 1036/10 dismissed the complaint and ruled that the fact of using only half of the symbol did not matter from a heraldic point of view, because the PPO was still dealing with the emblem (flag) of the European Union. Euro Sklep S.A. filed a cassation complaint. The Company argued that the presence of the words on the flag is the negation of the principles of heraldry, and itself refutes allegation of heraldic imitation. Euro Sklep pointed out to couple of CTMs registered by the OHIM that share the same symbols of of yellow stars on blue background.

The Supreme Administrative Court in its judgment of 18 September 2012 case file II GSK 1156/11 dismissed the cassation and ruled that the provisions of Paris Convention and Polish Industrial Property Law were introduced to protect National emblems and symbols against dilution.

Categories: Art. 131(2)(iii) IPL | Art. 6ter Paris Convention | company name or firm | International law | Paris Convention | personal rights or interests | Polish Act on Industrial Property Law | Polish Supreme Administrative Court | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 332/11

March 28th, 2012, Tomasz Rychlicki

On 20 August 2007, the Polish company ALTA Sp. z o.o. from Poznań applied for the figurative trade mark Z-329092 for goods in Class 5, 42 and 44. The Board of the Red Cros submited to the Polish Patent Office observations as to the existence of grounds that cause a right of protection to be denied. On September 2009, the PPO refused to grant the right. ALTA filed a complaint against this decision.

Z-329092

The Voivodeship Administrative Court in its judgment of 12 October 2010 case file VI SA/Wa 1095/10 noted that Article 131(2)(iii) of the Polish Industrial Property Law provides that the right of protection shall not be granted for a sign, if it incorporates the abbreviated names or symbols (armorial bearings, flags, emblems) of other countries, international organisations, as well as official signs, hallmarks indicating control and warranty adopted in other countries, if the prohibition of registration follows from international agreements, unless the applicant is able to produce an authorisation issued by a competent authority, which authorises him to use such signs in the course of trade. The Court ruled that this prohibition applies not only to those symbols as such, but it also prohibits the registration and use of the trade marks that are some kind of imitation of those symbols and copying the relevant characteristics of the heraldic symbols is this kind of imitation. The PPO rightly found that the trade mark in question contains the image of the cross which is at least an imitation of the symbol of the International Red Cross because of similar color (red) and shape. Placing the image of a bear on the cross does not change the fact that this trade mark contains also an image of the cross imitating the Red Cross sign. The provision of Article 131(2)(iii) of the IPL excludes the possibility of granting trade mark rights to the signs that contain symbols of international organizations (if there is no consent of the holder), so other elements of the mark does not matter. Thus placing in the applied sign the image of a cross which is at least an imitation of the International Red Cross symbol, deprives the sign the possibility to be registered as a trade mark. ALTA filed a cassation complaint.

The Supreme Administrative Court in its judgment of 27 March 2012 case file II GSK 332/11 dismissed it.

Categories: absolute grounds for refusal | Art. 131(2)(iii) IPL | Art. 6ter Paris Convention | International law | Paris Convention | Polish Act on Industrial Property Law | trademark law | Voivodeship Administrative Court.