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Trade mark law, case II GSK 265/06

May 7th, 2007, Tomasz Rychlicki

On 1 December 2003, Telekomunikacja Polska S.A, filed an opposition against the decision of the Patent Office of 26 March 2003 granting the right of protection for word-figurative trade mark Teleaudio R-143563 for Teleaudio Sp. z o.o. for services in classes 38 and 41 such as line and/or phone numbers renatal, audio-text services, organization of entertainment and education competitions.

R-143563

TP S.A. stated that it is the owner of AUDIOTELE R-101622 trade mark and word-figurative trade mark AUDIO TELE R-101623, registered with the earlier priority, which are used in trade from 19 March 1995 for audio-text services. TP S.A. argued that it was the first company that lanched on 19 March 1995, a national audio-text system under the “audiotele” brand name. TP S.A. argued also that TELEAUDIO Sp. z o.o. entered the market of audio-text services almost a year later, and deliberately chose imitating sign for its firm (company name) and the trade mark, and copied the graphic which depicts a phone. According to TP S.A. such actions violated its property rights and might mislead the public as to the origin of services.

The PPO ruled that the differences between the trade marks were not sufficient to eliminate the similarity between the compared signs. The essential elements of those marks – the words AUDIOTELE and TELEAUDIO were confusingly similar. According to the PPO the figurative elements of marks perform only a supporting role, as they will be perceived by the public as a decoration, not as the most significant elements that identify the source of the services. The PPO has indicated that the average customer will focus on the words AUDIOTELE and TELEAUDIO because in assessing the similarity of characters as a whole, the dominant and convergent elements of the sign are of crucial importance.

R-101623

Teleaudio Sp. z o.o. decided to file a complaint. The Voivodeship Administrative court in Warsaw in its judgment of 25 April 2006 case file VI SA/Wa 2082/05 dissmissed the case. In the opinion of the VAC, the PPO has properly analyzed the similarity of TELAUDIO R-143563 trade mark and opposing AUDIOTELE sign. Both signs had to be compared, given the verbal, aural and semantic similarity. The VAC held that the case in question concerns the similarity of signs in verbal, aural and semantic aspects. The Court considered these factors as affecting the risk of confusion. The VAC noted that the PPO has analyzed the sign as a whole, and rightly presented the idea about the possible characteristics that may affect the ability to distinguish one trade mark from another. Teleaudio Sp. z o.o. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 265/06 dismissed the case. The SAC ruled the VAC accurately assessed the similarity of signs as an integral whole. The SAC noted also that the case-law of the Supreme Court established the rule that the legal assessment on the basis of Article 7 and Article 9(1)(i) and (ii) of the TMA with regard to word-figurative trade mark should be based on an integral whole of a trade mark, and not only one of the words, which is only one of its components (see the judgement of the Supreme Court of 11 March 1999, case file III RN 136/98, published in OSN, 2000/1/2).

The Court ruled also that the issue of similarity of trade marks is both the factual and legal category. See also “Trade mark law, case II GSK 36/05“. The Court ruled that the VAC rightly pointed out that the similarity of signs is examined and assessed based on common elements of marks, not by the differences. Thus, the differences do not preclude the similarity of the signs. The examination of the similarity should thus lead to the objective similarities and differences, and their sum should be related to the average attention of a reasonable consumer (see U. Promińska, Naruszenia praw na dobrach niematerialnych, PIRzP, 2001, p. 95 and literature cited therein).

Trade mark law, case II GSK 173/06

November 8th, 2006, Tomasz Rychlicki

On 10 December 2003, Eska Nord Sp. z o. o. requested the Polish Patent Office to decide on the lapse of the right of protection for “Radio 73,2 Fm ESKA” R-98909 trade mark due to the non-use. The applicant explained that since 1993 it operates as a commercial radio station that broadcasts its program in the Tri-City region (Gdańsk, Sopot and Gdynia) and the surrounding area, using the ESKA-NORD brand. The applicant has claimed its legal interest from the fact that the District Court in Gdańsk issued on 1 August 2003 an order prohibiting Radio ESKA S.A. the broadcasting at radio frequency 94.6 MHz in Gdynia and 90.7 Mhz in Gdansk, and prohibiting radio broadcasting and advertising under the names Eska and Eska Trójmiasto.

R-98909

Radio Eska S. A. sought to dismiss the request and provided the correspondence with the National Broadcasting Council on the use in 1999, of the questioned trade mark in the registered form. The company explained also that it ceased using in “73.2″ number in the questioned sign as it was justified because it changed the broadcasting frequency under the Regulation of the Minister of Communications dated 16 December 1999 on the frequency allocation and frequency ranges in the Republic of Poland and the conditions of their use Official Journal No 109, item 1252.

The PPO its decision of 21 February 2005 dismissed the request and pointed out that timeframe to be considered whether disputed trade mark was used and in what form includes the period of 5 years between dates 10 December 1998 and 10 December 2003.

The Voivodeship administrative Court in Warsaw in its judgmen of 7 February 2006 case file VI SA/Wa 1749/05 dismissed the complaint. The Court, pointed out to the fact that the use of the trade mark in broadcasted programs and in correspondence was the use in the course of trade and it met the requirement of genuine use as referred to in the IPL. The Court also noted that under Article 19(1) of the TRIPS the important reasons of the non-use is justified, are import restrictions or other government requirements for goods or services protected by a trademark.

The Supreme Administrative Court in its judgment of 10 October 2006 case file II GSK 173/06 held that the use of a trade mark in a form that differs from that for of a trade mark for which it was granted a right of protection, but in elements which do not alter its distinctive character, is also deemed as the genuine use. The SAc ruled also that there was the use of the trade mark in the form of RDS (Radio Data System) during the emission of radio programs and within a website available at www.eska.pl, presenting the logo of the station. In the first case while listening to the station with a radio equipped with RDS there were presented verbal communications, including communication with the station name (in this case: Radio Eska).

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 Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later 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 kc). This protection arises from the date of the first use of a firm in business.

Trade mark law, case II GSK 63/05

June 22nd, 2006, Tomasz Rychlicki

Hortino (formerly Zakład Przetwórstwa Owocowo-Warzywnego, “Zakład” for short) entered a sale agreement with Hortex on 31 May 2000, purchasing one of the Hortex’s manufacturing units located in Leżajsk. The agreement did not apply to any trade mark assets and was not a trade mark licence agreement at all. In June 2000, Zaklad added to its company name the word “Hortino”. One month later, the company (now called Hortino) applied to the Polish Patent Office (PPO) to register a trade mark for goods in classes 5, 29, 30, 31, 32, 39, and 42 of the Nice Classification. The trade mark was represented as a white snowflake on a blue rectangular background with the word “Hortino” in white letters.

R-130090

The PPO registered Hortino’s trade mark R-130090 in June 2001. Hortex challenged the registration before the PPO claiming that the decision to grant Hortino’s trade mark was inconsistent with article 9(1)(1) he old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments, repealed on 22 August 2001 by the 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 later amendments.

Hortex claimed that this section clearly precluded registration of a trade mark with later priority if its usage was in conflict with an already-registered trade mark. Hortex was already the owner of a registered trade mark composed of a white background, green bordering, and the letters “Hortex” in red. The Board of Oppositions in its decision of 9 May 2003, case Sp. 192/01, not only upheld Hortex’s objection but also decided that Hortino’s trade mark was registered contrary to Article 8(1) and (2) of the TMA. This Article prohibits registration of a trade mark that is contrary to principles of social comity (a very broad Polish civil law legal concept, in some respects similar to the public policy rule) or violates the personal or financial rights of a third party. The PPO also ruled HORTEX trade mark is so-called “hard sign” that is existing on the market for many years and it is easily identified by the customers, thereby the risk of confusing it with another mark is increasingly significant.

Hortino appealed to the Voivodeship Administrative Court in Warsaw, which upheld the contested decision in its judgment of 9 September 2004, case file II SA 2481/03. The Voivodeship Administrative Court also ruled that the registration of Hortino’s mark was in breach of article 9(1)(1) of TMA, that mark being sufficiently similar to an earlier registered trade mark to be likely to confuse consumers, under regular conditions of commerce, as to the origin of goods. Once again, Hortino filed a cassation complaint, this time to the Supreme Administrative Court. The SAC declined to hear the case and upheld the lower court’s decision in its judgment of 24 May 2005, case file II GSK 63/05.

This successfully ended the administrative procedure between the respective parties. The second suit was decided by the civil court and I reported on this case in my posts entitled “Unfair competition delict, case V CSK 237/06“.

Trade mark law, case II SA 2971/01

April 28th, 2006, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 3 MArch 2002 case file II SA 2971/01 held that the allegation of illegality, which is being a prerequisite for inadmissibility of trade mark registration, does not only concern a trade mark itself. This issue has already been explained by legal commentators, who argued that it is not only a conflict with the law or rules of social coexistence of the trade mark itself (its content), but also the unlawful use of the trade mark, i.e., certain actions and intentions of the person who applied for the trade mark registration. See R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, pp. 74-75.

This understanding of the registration of a trade mark violated the principles of social coexistence. The circumstances of the disputed case have indicated that the party who filed a complaint against the decision of the Polish Patent Office in which the right of protection was invalidated, was acting in bad faith when it applied for the registration. This case concerned the invalidation proceedings of BELET R-109473 trade mark registered for Belet-Polska Spółka z o.o. from Poznań.

Trade mark law, case V CK 280/04

November 23rd, 2005, Tomasz Rychlicki

The Supreme Court in its judgment of 17 June 2004 case file V CK 280/04 held that the owner of rights listed in Article 8(2) of the TMA can claim, with reference to the normative basis of these rights, for their protection, to prohibit the activities covered by the exclusive right, arising from the decision to register a trade mark, which violate these laws, without first having to invalidate the registration of the trade mark.

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;

The Court ruled that legal protection resulting from registration of the trade mark is only formal and does not constitute an obstacle to a prohibition of infringement of rights of a particular entity. The court is not bound by a final decision of the Polish Patent Office on the registration of the trade mark when it comes to assessing the facts underlying the judgment that was rendered in civil proceedings.

Trade mark law, case II CZP 109/94

October 28th, 2005, Tomasz Rychlicki

The Supreme Court in its judgment of 30 September 1994, case file II CZP 109/94 held that in the event of a conflict between such rights as the company name (the firm) and a protected/registered trademark, the right to use should be determined by the priority of use of a given right. This case concerned COGITO trade mark.

Trade mark law, case II SA 3446/01

August 10th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 14 December 2001, case file II SA 3446/01 ruled that the English word “heritage” is not a generic term for the services it was registered for, nor does it inform about its properties, quality or usefulness. Therefore “heritage” word can be used as a trade mark.

The udgments of the Court of Justice of the EC in case C-3/03 P, Matratzen Concord GmbH vs. Office for Harmonisation in the Internal Market (Trade Marks and Designs), [2004] E.C.R. I-3657 and C-421/04, Matratzen Concord AG vs. Hukla Germany SA, [2006] E.C.R. I-2303, have been issued couple of years later.

Trade mark and personal rights law, case II SA 3390/01

May 12th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 10 January 2002, case file II SA 3390/01 held that it is the established rule in the legal doctrine and case law, that the registration of a trade mark which is identical to a company name of other entrepreneur and that was used by this company prior the registration of a questioned trade mark, affects the personal interests of this company. The Court ruled that the general impression given by the sign and its dominant element should be taken into account while assessing the similarity of the distinctive signs. This case concerned the invalidation proceedings of Pebex R-112104 trade mark.

Trade mark law, case II SA 1867/02

March 10th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 12 March 2003, case file II SA 1867/02, held that it’s in accordance with the general rules, that in the event of a collision between company name (the firm) and trade mark that has been registered with the “later precedence”, the priority shall be given to the right that existed earlier.

Personal interest, case I ACr 1013/95

February 21st, 2005, Tomasz Rychlicki

The Appellate Court in Warsaw in its judgment of 19 December 1999, case file I ACr 1013/95, held that the reputation of the company is understood as a general positive perception and evaluation of products of such a company that is expressed by consumers. It may be treated as personal interest/rights of a legal person to which it apply mutatis mutandis, by articles 23 and 24 f the Civil Code – CC – (in Polish: Kodeks Cywilny) of 23 April 1964, Journal of Laws (Dziennik Ustaw) No. 16, item 93, with later amendments.

Article 23
The personal interests of a human being, in particular to health, dignity, freedom, freedom of conscience, surname or pseudonym, image, secrecy of correspondence, inviolability of home, and scientific, artistic, inventor’s and rationalizing achievements, shall be protected by civil law independent of protection envisaged in other provisions.

Article 24
§ 1 The person whose personal interests are threatened by someone else’s action, may require the desist of that action, unless it is not illegal. In the event of the infringement one may also require, the person who committed the violation, to fulfill the actions necessary to remove its effects, in particular, to make a statement of the relevant content and appropriate format. According to the conditions laid down in the Code one may also require monetary compensation or payment of an appropriate amount of money for a social purpose indicated.
§ 2 If as the result of a breach of personal interests one has suffered pecuniary prejudice, the aggrieved person may claim compensation based on general principles.
§ 3 The above shall not prejudice the entitlements provided by other regulations, in particular in copyright law and the patent (invention) law.

These non-economic/non-commercial values by which a legal person may operate on the market in accordance with the scope of its business, are also its personal rights interests.

Personal rights, case I ACa 560/04

February 10th, 2005, Tomasz Rychlicki

The Appellate Court in Katowice in its judgment of 4 November 2004, case file I ACa 560/04, ruled that the firm which in this case was understood as the company name, is often intellectual interest/asset of significant value, which according to the will of the legislature is protected by the law. This is an absolute subjective right which is effective erga omnes, and it’s personal interest/right that is associated with an entrepreneur.

The broadest spectrum protection that may be enforced not only in commerce but also may be brought against anyone who is in breach of the interest of entrepreneurs, is provided in articles 23 and 24 of the Civil Code – CC – (in Polish: Kodeks Cywilny) of 23 April 1964, Journal of Laws (Dziennik Ustaw) No. 16, item 93, with later amendments.

Article 23
The personal interests/rights of a human being, in particular to health, dignity, freedom, freedom of conscience, surname or pseudonym, image, secrecy of correspondence, inviolability of home, and scientific, artistic, inventor’s and rationalizing achievements, shall be protected by civil law independent of protection envisaged in other provisions.

Article 24
§ 1 The person whose personal rights are threatened by someone else’s action, may require the desist of that action, unless it is not illegal. In the event of the infringement one may also require, the person who committed the violation, to fulfill the actions necessary to remove its effects, in particular, to make a statement of the relevant content and appropriate format. According to the conditions laid down in the Code one may also require monetary compensation or payment of an appropriate amount of money for a social purpose indicated.

§ 2 If as the result of a breach of personal rights one has suffered pecuniary prejudice, the aggrieved person may claim compensation based on general principles.

§ 3 The above shall not prejudice the entitlements provided by other regulations, in particular in copyright law and the patent (invention) law.

The Court also ruled that if a press title is encroaching a realm of personal property, and if such action violates or threatens the interests of another entrepreneur, the sufferer may exercise his power by seeking civil protection through civil process. There must exist the real apprehensive of an infringements and valid registration for the press title for the effectiveness of such a claim.

Personal rights, case I CKN 100/01

January 26th, 2005, Tomasz Rychlicki

The Supreme Court in a judgment of 7 March 2003, case file I CKN 100/01, ruled that the symbol of a legal person is a carrier of its identity in the external perception, and like the name or the firm, it constitutes a personal interest/right of such company.

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.