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Archive for: Art. 8 Paris Convention

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 VI SA/Wa 574/10

August 23rd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 15 June 2010 case file VI SA/Wa 574/10 ruled that Article 8 of the Paris Convention is a “conflicting norm” i.e. a norm/rule in private international law that points to appropriate substantive law that should be applied in a given case. The “trade name” on the basis of Article. 8, 9, 10 bis of the Paris Convention covers both the company name as an indication of business and company name in the subjective meaning. A trade name is the name of an entity being endowed with a right (merchant, trader, businessman – the subject of rights ), under which it is established and is performing its business activity, usually organized as the company/enterprise (the object of rights). It is therefore a designation of a business, which includes distinctive elements, and all these elements that allow for the individualization of economic activity.

R-194401

The disclosure of company’s name in the registry (National Court Register – Polish public register maintained by the selected regional courts and the Ministry of Justice which includes the register of enterprises) has a declaratory nature and provides the legal basis for the possibility of setting up/starting a business, therefore the priority of use decides on the priority of right to the company name.

Trade mark law, case VI SA/Wa 1873/08

July 20th, 2010, Tomasz Rychlicki

On 25 May 2005, the Polish Patent Office granted the right of protection for the word trade mark MIESZKO R-165555 for goods in Class 29. ZAKŁADY PRZEMYSŁU CUKIERNICZEGO “MIESZKO” S.A. filed a notice of oppostion. MIESZKO S.A. claimed infringement of its company name and identicality with its trade mark MIESZKO R-87813 registered with an earlier priority for goods in Class 30. The PPO dismissed the opposition and ruled that both trade marks are identical, but Mieszko is a male name of Slavic origin, and the goods differ to the extent that there is no risk of consumers confusion. The very similarity of the signs, however, cannot be a sufficient argument to invalidate the right of protection for the word mark.

The Voivodeship Administrative Court in Warsaw in its judgment of 17 March 2009 case file VI SA/Wa 1873/08 dismissed the complaint.

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, case II GSK 1111/08

January 13th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 24 July 2008 case file VI SA/Wa 237/08 dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeals against the Polish Patent Office decisions of 19 March 2007 case files Sp. 68/04 and Sp. 69/04, regarding the invalidation of the right of protection for word-figurative trade marks TIFFANY R-128063 and “Tiffany & Broadway Inc.” R-128064 which were registered in class 25 for shoes. The New York’s company argued inter alia that use of TIFFANY trade mark for goods such as footwear is a parasitic activity that uses another’s trade mark reputation and is bringing undue financial benefit to the holder of national registrations. The Company also stressed the fact that its trade mark is subject to protection under article 8 of the Paris Convention.

The VAC ruled that the application for the protection of the TIFFANY mark for goods in class 25 was contrary to the principles of social coexistence because it caused the risk of weakening the reputation of the trade mark. Given the fact that the shoes are cheap and readily available, there is a risk of dilution of the reputation of TIFFANY trade mark and it may lead to lose its attractiveness among the exclusive clientele of goods bearing this mark.

The SAC in a judgment of 8 July 2009, case file II GSK 1111/08 ruled that the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, subsequent amendments, do not explicitly provide for any special protection for unregistered reputed trade marks. However, the doctrine and the Polish case law have already accepted the concept, that such protection could be provided under article 8(1) of the TMA.

A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;

In particular looking at the circumstance of “a trade mark conflicting with the principles of social coexistence”, from the subjective perspective – it was commented that, the “contradiction/variance with the principles of social coexistence” may concerning the conduct/behavior of the applicant. On the basis of such conclusions, the registration of a sign for the goods of another kind, if the registration was intended to use the reputation of another’s trade mark or it was a threat of such reputation, was excluded. A trade mark application that was filed contrary to the principles of social coexistence, was an application made in bad faith. The absolute grounds/obstacles that are provided against the registration of the mark as defined in article 8(1) of the TMA do not directly refer to the relationship between the sign that was applied for and any other competing trade mark, however, in accordance with the accepted interpretation of that provision, in case of the infringement of the rules of social coexistence, the obstacle could be the inappropriate behavior on the applicant (its actions done in bad faith). The assessment of applicant’s actions, who was motivated by the desire to use another’s trade mark reputation, should therefore be also varied according to circumstances of its motivation and, not only related to the trade mark itself.

The application for the right of protection for a trade mark that was made with the intent to use another trade mark’s reputation should be judged as an application that was made with the breach of the rules of social coexistence (application made in bad faith), regardless of whether it concerns a reputed registered trade mark or unregistered reputed trade mark.

The Polish case law, for instance the Supreme Administrative Court in its judgment of 9 May 2008, case file II GSK 506/07, that was previously reported in the post entitled “Trade mark law, case II GSK 506/07“, already established the rule that in a case of famous trade mark and its reputation, besides its recognition, it must be also characterized by the following characteristics:

market share/participation (both quantity and value of sold goods),
range and long-lasting of an advertisment of the product bearing a trade mark,
territorial and temporal range of use,
licences granted for trade mark use, quality of goods bearing a trade mark,
value of a given sign in assessment of an independent financial institution,
size and extent of expenditures spent on promotion of a mark,
the relationship on prices of substitute goods,
if (and to what extent) the mark is used by third party.

The SAC also noted that the Community case law provides several fundamental conditions for the recognition of a trade mark as a reputed one. These are:

knowledge of the trade mark by a significant group of customers,
the contribution of the trade mark in the market,
intensity and geographic scope of the use,
intensity matching of goods with the trade mark,
the size of expenditures on advertising and promotion of the trade mark.

The SAC cited, inter alia, the judgment of the Court of Justice of the UE of 14 September 1999 case C-375/97, General Motors and the judgment of the Court of First Instance of 13 December 2004 case T-8/03, El Corte Ingles and the CFI’s judgment of 25 May 2005 case T-67/04, Spa Finders.

It is also clear that the reputation of a trade mark must be assessed and established in the country in which the protection is sought. If one would like to qualify a given trade mark as a reputed one in the Republic of Poland, then the argument of the international reputation of a trade mark is not sufficient. The basic circumstance for the recognition of the reputation of a sign in a specific country is to show by a person who is invoking this argument, the market share in terms of both quantity and value of goods sold.

The SAC held that provisions of the First Directive 89/104/EEC of 21 December 1988 do not preclude the possibility of granting the protection to unregistered reputed trade marks under the national law. Just to keep it in order, it is worth adding, that 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, provides for such a possibility in the Article 132(2)(iii).

2) A right of protection for a trademark shall not be granted, if the trademark:
(iii) is identical or similar to a renown trademark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark. The above provision shall apply to well-known trademarks accordingly.

The protection of registered trade marks to the extent of the wording of Article 4(4)(a) of the Directive. The trade mark application that was made in bad faith shall be rejected based on the absolute ground for refusal of protection based on the provisions of Article 131(2)(i) of the IPL.

2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,

The SAC ruled that the provisions of Article 4(4)(a) of the Directive cannot be interpreted as the maximum limitation for the protection of famous marks in the national law and it would be difficult to follow the arguments that the First Directive 89/104 is an example of the so-called “complete harmonization” citing the judgment of the Court of Justice of the European Union of 9 January 2003 in case C-292/00, Davidoff & Cie S. A.

According to the SAC, the court of first instance (VAC) wrongly assumed the bad faith of the applicant and it did not consider the fact that the applicant has conducted its business in Poland since 1990 with the use of the mark, and after about five years of its activity, the company applied for the registration of the mark. These circumstances certainly were not indifferent to assess the intentions and purposes of the applicant so the VAC should address them in the grounds of the appeal.

When deciding on the interpretation of Article 8(1) of the TMA, which allows for the protection of not registered reputed trade marks in Poland, it should be also noted, that such protection have a special character because it applies to unregistered marks, and it is an exception to the principle of protecting industrial property rights by the registration process. This requires preserving much care, so that without proper justification, would not depreciate the importance of registering trade mark and it would not reduced the registration to a purely formal procedure that has no importance.

Therefore, the SAC annulled both questioned judgments of the Voivodeship Administrative Court and returned to the VAC for reconsideration in accordance with the conclusions reached and ordered the Polish Patent Office to pay Tiffany & Broadway Inc. Div. of Texpol Corporation 1200 PLN as reimbursement of costs of the cassation compliant.

See also “Trade mark law, case II GSK 1110/08” and “Trade mark law, case VI SA/Wa 214/08“.

Unfair competition, case II CR 367/87

January 3rd, 2008, Tomasz Rychlicki

The French company Interagra, seated in Paris, demanded the cease of use of the same name by an international enterprise established in Poznań by a Dutch citizen. The company was registered in 1983 in the Register of International Companies in Poznań by Barthold Asauerus van Doom, and operated on the whole Polish market. This company has also registered Interagra trade marks R-61166 and R-61280. However, long before these events, the company Interagra SA started its operation in France. Both companies operated in the field of agricultural products and food. The company Interagra from Poznań knew about the existence of the French one, because Interagra SA had established commercial links with Polish foreign trade centrals (entities that were allowed to cooperate with foreign businesses during the communism era in Poland).

The Supreme Court in its judgment of 14 June 1988 case file II CR 367/87 held that in case of marking/designating of the undertaking in a way which may mislead customers in relation to its identity, any act that infringes or violates the rules of fair competition exhausts the conditions set out in Article 2 of the Act of 1926 on combating unfair competition, which is also valid for the provision of the Article 5 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.

Trade mark law, case II GSK 377/05

October 6th, 2006, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for word-figurative trade mark OCETIX R-135047 based on provisions of Article 8(2) of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments. The request was filed by the competitior of Szczęsna Ewa DELTA L.T.D, who claimed its prior rights to the company name (firm).

Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;

Ewa Szczęsna filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 20 July 2005 case file VI SA/Wa 67/05 dissmissed the case. The VAC agreed with the PPO that the registration of the word-figurative trade mark OCETIX constituted the infringement of the firm of the competitor of Ewa Szczęsna, who established its undertaking in 1991. The Court ruled that the dominant element is the word OCETIX, it attracts the attention and has the distinctive character, while other elements are informative and are indicating the scope of the activities of Szczęsna Ewa DELTA L.T.D.

The Supreme Administrative Court in its judgment of 5 April 2006 case file II GSK 377/05 upheld the contested judgment and ruled that in accordance with Article 164 of the IPL, the right of protection for a trade mark may be invalidated at the request of any person who has legitimate interest. Article 315(3) of the IPL provides the principle according to which the registrability of signs registered or applied for the registration before 22 August 2001, is assessed on the basis of existing regulations. Thus, the law underlying the assessment of trade mark protection for OCETIX that was applied for the registration on 14 October 1998 are the provisions of the TMA.

R-135047

The SAC repeated that the right of protection for a trade mark is deemed as an exclusive, absolute, transferable and heritable property right. It’s a sign intended to distinguish the goods of one undertaking from those of the same type from another entrepreneur. A trade mark performs a distinctive, warranty and advertising functions. The Court noted also that in the course of trade, the category of distinctive signs, in addition to trade marks, are also brands/signs that are distinguishing of companies. The firm is one of such signs. It is the name under a which the registered merchant (general partnership, limited partnership, limited liability company, joint stock company) operates its undertaking. The firm of an undertaking distinguishes a given undertaking from other undertakings, in the same and/or other object/way of business. See R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 13 and 17. The Court also ruled that the Paris Convention of 20 March 1883 on the Protection of Industrial Property, published in Journal of Laws (Dziennik Ustaw) of 1975, No. 9, item. 51 and 52), introduced to the Polish law the term of the trade name, which previously was not used in the Polish legislation. The term collectively covers all the markings of companies enjoyed by the persons mentioned in Articles 2 and 3 of the Convention. The SAC agreed that Article 8 of the Convention does not constitute an independent basis to protect the trade name of the entrepreneur, because it does not specify conditions for such protection and does not indicate what claims should be used in the case of infringement of the rights to the company name. However, this affect the domestic law. See also “Trade mark law, case II SA 2914/01“. The Court ruled that the firm is protected under the Article 37 Code of Commerce (it was repealed by the Code of Commercial Companies later on) and Article 43 of the Civil Code. According to Article 37 of the Code of Commerce, the protection of the firm arises upon its entry into the commercial register, and will expire on the date a court order to withdraw its registration from the register comes into force. The infringement of the firm occurs if there is unlawful use by unauthorized person of a sign which does not distinguish definitively from the firm in a given locality (Article 37 in connection with Article. 35 of the Code of Commerce). Pursuant to Article 43 of the Civil Code, the firm is subject to the protection provided for personal rights/interests (Articles 23 and 24 of the CC). This protection arises from the date of the first use of a firm in business.

Trade mark law, case II SA 2914/01

January 6th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 28 February 2002, case file II SA 2914/01 published in Monitor Prawniczy 2002/7/291 held that Article 8 of the Convention does not constitute an independent basis for the protection of the trade name of the entrepreneur, because it does not specify conditions for such protection and does not indicate what claims should be used in the case of infringement of the rights to the company name. However, this affect the domestic law.

R-107547

This case concerned trade mark invalidation proceedings of ROLEX R-107547 trade mark owned by Woźniak Krzysztof ROLEX Przedsiębiorstwo Produkcyjno Handlowo Usługowe. The proceedings were started by ROLEX SA company who owns ROLEX R-64281 trade mark.