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Archive for: Voivodeship Administrative Court

Trade mark law, case Sp. 500/11

January 30th, 2012, Tomasz Rychlicki

On July 2008, Barbara Hildman requested the Polish Patent Office to invalidate the right of protection of the word-figurative trade mark BIKINI CHRISTIAN DIOR PARIS R-175224 owned by Parfums Christian Dior from Paris, and registered for goods in Class 03 such as body and face care products. Barbara Hildman argued that BIKINI CHRISTIAN DIOR PARIS R-175224 is similar to the trade mark BIKINI R-124158 registered with an earlier priority.

R-175224

Parfums Christian Dior admitted that the trade mark at issue was registered for similar range of goods, but the disputed sign has other distinctive elements such as CHRISTIAN DIOR and a colorful label, which proves that there is no risk of consumers’ confusion. Moreover, the Company argued that the contested mark containing the element CHRISTIAN DIOR is produced and marketed by the producer of luxury goods and it is basically identical to the well-known and reputable company name of the holder – Parfums Christian Dior. These products, as exclusive goods, are always sold at exposed places clearly marked with the company name “Christian Dior”, which reduces to zero the possibility of confusion with cosmetic products to other companies.

The Adjudicative Board of the Polish Patent Office dismissed the request. PPO decided that there is no likelihood of confusion, also, because the questioned trade mark is a carrier of the allure, prestigious image and aura of luxury. The combination of the weak trade mark BIKINI with a strong and recognizable sign CHRISTIAN DIOR PARIS, completely eliminates the risk of confusion between the compared trade marks by the oriented and attentive consumer.

Barbara Hildman filed a complaint against this decision. She argued that merging of the word BIKINI with the words “CHRISTIAN DIOR PARIS” and a graphic element, is like appropriation of someone else’s trade mark. The creation of trade marks by adding to them a company name and its seat distorts the nature and function of a trade mark, because each sign could be easily imitated, only adding a company name to such a sign, and in that case the registration of the earlier mark would be quite superfluous and without legal significance.

The Voivodeship Administrative Court in Warsaw in its judgment of 13 May 2011 case file VI SA/Wa 41/11 repealed the contested decision and returned it to the PPO for further reconsideration. The Court ruled that the PPO did not properly examine the similarity of goods. There were no comparison on „which shelf” these identical goods are placed and who is their recipient, which in consequence it does not exclude the risk of association of the earlier trade mark with the later one. The Polish Patent Office did not consider that the necessary condition for the likelihood of confusion is at least the minimum similarity between compared trade marks. The lack of examination of this condition would mean that the company Christian Dior, or any other reputable or well-known company – due to its brand recognition, is granted the possibility to “append” to a recognizable name, or names – of any signs that are protected with earlier priority, and presenting it as their own. This would also mean illusory protection for an earlier trade mark in a situation where the reputable sign would build the family of marks, without prejudice to its recognition, just by adding a known company name or surname to any sign. In any of such cases, the appropriation by the prestigious brand of less known earlier trade marks, would show that their position and earlier protection do not apply and such protection has not been given any legal effect, and each of such a character – compared with the prestige trade mark, would have been assessed as having weak distinctive ability.

The Polish Patent Office in its decision of 19 January 2012 case Sp. 500/11 invalidated the right of protection for the trade mark BIKINI CHRISTIAN DIOR PARIS R-175224.

Trade mark law, case II GSK 839/10

January 17th, 2012, Tomasz Rychlicki

Nufarm Australia Limited, the owner of the trade mark DUAL SALT TECHNOLOGY R-164428 registered for goods in Class 5, requested the Polish Patent Office to decide on the lapse of the right of protection for DUAL IR-0534713 owned by Syngenta Participations AG. Earlier before, Syngenta opposed the registratin of the trade mark DUAL SALT TECHNOLOGY R-164428.

Syngenta requested the PPO to dismiss the request. The Company provided evidence of use of the trade mark DUAL IR-0534713. There were six copies of VAT invoices from the period from 2002 to 2006, of sale of goods bearing the sign “DUAL GOLD 960 EC”, and two newspaper articles concerning this product and the material safety data sheets of “DUAL GOLD 960 EC of August 2005.

The Polish Patent Office decided on the lapse of the right of protection for DUAL IR-0534713 and dismissed the opposition against the registration of the trade mark DUAL SALT TECHNOLOGY R-164428. Syngenta filed a complaint against this decision. The Voivodeship Administrative Court in its judgment of 19 March 2010 case file VI SA/Wa 1807/09 dismissed it. Syngenta filed a cassation compliant.

The Supreme Administrative Court in its judgment of 3 October 2011 case file II GSK 839/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC ruled that the cassation complaint can be based on the following grounds: a) the violation of substantive law by its erroneous interpretation or misuse, or the violation of proceedings rules, if it could affect the outcome of the case. The specific provisions of substantive law or procedural law, which were violated the court of first instance, should be indicated. Furthermore, it should be precisely explained What was the misapplication or misinterpretation – in relation to substantive law, or it should be demonstrated what was the significant impact of the violation of procedural law to decide the case by the court of first instance – in relation to the rules of proceedings. The Supreme Administrative Court cannot change or precise cassation complaints and their grounds, or otherwise correct them, due to limitations resulting from the mentioned rules. If the cassation complaint alleges violation of both substantive law and proceedings, as it was in the present case, the Supreme Administrative Court recognizes the allegation of violation of proceedings, in the first place.

The SAC decided the PPO has erred in its findings because it considered that the evidence submitted on, was from the years 2002-2006, while there was also an invoice from March 2007 on the case file, which was of the relevance to the case. It was a sales invoice of the preparation DUAL GOLD 960 EC 12 XI and DUAL GOLD 960 EC 4X 5 L. Surprisingly, the Supreme Administrative Court acknowledged, that the case facts showed that the trade mark DUAL GOLD lapsed on June 2006, so as a trade mark it ceased to exist on the market from that date (it was not registered). Since the trade mark DUAL GOLD ceased to exist in legal transactions after June 2006, the Polish Patent Office should examine whether this sign could be used in this situation, as indicated on the invoice of March 2007, or perhaps the invoice indicated the use of any other trade mark, for example, the trade mark DUAL, and therefore the Article 170 (1) of the IPL should be applied in this case.

Article 170
1. Subject to paragraph (2), the Patent Office shall dismiss a request for declaring the right of protection lapsed in the case referred to in Article 169(1)(i), if before the submission of the request genuine use of the mark has started or has been resumed.

2. Start or resumption of the use of the trademark after the expiration of an uninterrupted period of five successive years of non-use and within a period of three months preceding the submission of the request for declaring the right of protection lapsed, shall be disregarded, if preparations for the start or resumption of the use have been undertaken immediately after the right holder became aware of possible submission of such request.

3. Paragraphs (1) and (2) shall apply accordingly in the cases referred to in Article 169(7).

4. Loss of a right to use a sign or a symbol, referred to in Article 131(2) incorporated in a trademark shall not constitute a ground for non-making a decision declaring the right of protection for that trademark lapsed, if that sign or symbol ceased to be used in the trademark before a request for the declaration of the right of protection lapsed has been submitted.

In light of this evidence, which were the facts of this case, where a detailed analysis could affect the outcome of the case, it was premature by the court of first instance to rule and to say that, in this case that the genuine use of the mark has not started or has not been resumed, and PPO in this case did not erred in law, because it has analyzed all the evidence gathered. Considering other procedural allegations, the SAC held that administrative courts are not required in justification of its judgments to refer to each decision of Polish or European courts, that were cited by the author of a complaint. Such obligation can not be inferred from any provision of the Polish Act on Proceedings Before Administrative Courts. However, the administrative court should refer to these judgments, of which the applicant derives important arguments for the assessment of the case. In this case, the Court of first instance did not meet this requirement.

The SAC noted that the doctrine of law and case-law indicate that the trade mark proprietor may use its sign in an altered form in connection to the form of a sign that was registered. This alteration however, cannot apply to elements that decide on the distinctiveness of the sign, or may not lead to changes in represented form as a distinctive whole. See the judgment of the Supreme Administrative Court of 24 May 2006 case file II GSK 70/06. The SAC confirmed the high degree of freedom to dispose of a trademark by its proprietor, and cited the judgment of the Supreme Administrative Court of 24 June 2008 case file II GSK 251/08. See “Trade mark law, case II GSK 251/08“. The SAC found that the VAC has not sufficiently analyzed of all substantive rules in the context of this case. However, both situation where the violation of substantive law may happen, i.e., violation of substantive law by its incorrect interpretations or inappropriate use, refer only to cases where the facts of the case were established in no uncertain terms. Otherwise, the alleged breach of substantive law is at least premature. This situation took place in this case, because the author of the complainant cassation alleged in the first place the violation of the proceedings by the VAC. The violation of proceedings was based on the refusal by the court of first instance to repeal the decision issued by the Polish Patent Office, in a situation when that PPO did not adequately explain the facts of the case and did not examine in a comprehensive manner the whole of the evidence.

Trade mark law, case VI SA/Wa 586/11

January 2nd, 2012, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark @ @lfanet Z-331247 applied for by @ALFANET Marcin Małolepszy from Borowo Kolonia for for goods and services in Classes 09, 37, 38, 42 and 45.

Z-331247

The PPO decided that the applied trade mark is similar to the word trade mark ALFANET R-145012 registered with the earlier priority for the Polish company ALPHANET sp. z o.o. for services in class 38. The PPO did not agree with the applicant that ALFANET sign has weak distinctive character. Although the ending “net” is not distinctive for services related to the IT industry, but combined with the word “alpha”, it creates a neologism, which can be deemed as a fanciful sign.

Mr Małolepszy filed a complaint against the decision of the PPO, arguing that grant of a right of protection for a trade mark in respect of specific goods should not constitute an autonomous ground for refusal to grant a right of protection for a trade mark in respect of the goods identical or similar to those of another undertaking for a sole reason that the trade mark contains an identical or similar sign which refers to personal interests, in particular the owner’s name.

The Voivodeship Administrative Court in Warsaw in its judgment of 24 June 2011 case file VI SA/Wa 586/11 dismissed the complaint and held that the argument that the applicant relied on is an exception to the rule of inadmissibility of the coexistence of similar signs, and as such can not be broadly interpreted, and it should be applied with caution, taking into account not only the ratio legis, but also the principles provided in the Polish Industrial Property Law, that relate to trade marks and their basic functions. Although the provisions of Article 135 of the IPL, in contrast to previous regulations, do not include the condition that the applied trade mark should not be misleading, but, in the opinion of the Court, the interpretation that would lead to the registration of two identical or similar trade marks for identical goods and/or services, could not be accepted.

Trade mark law, case VI SA/Wa 723/11

December 28th, 2011, Tomasz Rychlicki

In 2007, the Polish Patent Office registered the word-figurative trademark citibank handlowy R-190720, for the American company Citibank, N.A., a National Banking Association. In 2008, Citigroup Inc. applied for the word trade mark CITI HANDLOWY Z-337716.

R-190720

The Polish Patent Office refused to grant the right of protection, despite the fact that Citibank N.A. is the sole shareholder of the Citigroup Inc., and Citigroup Inc. provided a letter of consent from its parent company. The PPO decided that both signs would mark very similar goods and services and are directed to the same audience. There is also visuall similarity, caused by common elements. The PPO noted that it is not obliged to take into account the letter of consent issued by Citibank, N.A. Citigroup Inc. filed a complaint against this decision.

The Voivodeship Administrative court in Warsaw in its judgment of 9 December 2011 case file VI SA/Wa 723/11 dismissed it. The Court held that the PPO correctly examined all evidence and properly decided on the similarity of signs. The VAC noted that that letters of consent may be evidence in proceedings, but they do not bind the PPO. The VAC pointed to the judgment of the Supreme Administrative Court of 20 December 2007 case file II GSK 279/07. The SAC held that a letter of consent cannot be used as ground to register a trade mark since the Republic of Poland did not implement Article 4(5) of the First Council Directive 89/104.

Personal data protection, case II SA/Wa 1009/11

December 28th, 2011, Tomasz Rychlicki

A Polish farmer who owns an agriculture tourism farm and is advertising his services and business on a personal website, has found negative comments about his services at one of the Internet forum websites. He asked the administrator of the forum to remove his personal data. Some posts have been removed, but the farmer has demanded the removal of all statements and comments, and the access to personal data of forum’s users. He requested the Inspector General for Personal Data Protection (GIODO) to order the forum administrator to remove all comments and to disclose all necessary personal data. The GIODO refused to issue such a decision and ruled that the farmer himself published such information as his name and address on his website in connection to the conducted economic activity. According to the GIODO, the processing of information on the farmer’s name on the Internet forum website, has its justification in Article 23(1)(v) of the Polish Act of 29 August 1997 on the Protection of Personal Data – PPD – (in Polish: Ustawa o ochronie danych osobowych), unified text published in Journal of Laws (Dziennik Ustaw) of 6 July 2002, No. 101, item 926, with subsequent amendments.

1. The processing of data is permitted only if:
1) the data subject has given his/her consent, unless the processing consists in erasure of personal data,
2) processing is necessary for the purpose of exercise of rights and duties resulting from a legal provision,
3) processing is necessary for the performance of a contract to which the data subject is a party or in order to take steps at the request of the data subject prior to entering into a contract,
4) processing is necessary for the performance of tasks provided for by law and carried out in the public interest,
5) processing is necessary for the purpose of the legitimate interests pursued by the controllers or data recipients, provided that the processing does not violate the rights and freedoms of the data subject.

According to the GIODO, the purpose of the legitimate interests is based on providing a service that allows for posting on the internet forum. The dissatisfied farmer filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 16 November 2011 case file II SA/Wa 1009/11 dismissed it and decided that personal data published on a website that advertises agritourism services, are closely related to his business activities, and therefore subject to much weaker protection. These services may be subject to different assessments of people using them, there may be also some negative comments. The Court noted that the farmer could file a civil suit for the infringement of his interests against persons who wrote such comments.

Access to public information, case II SAB/Wa 295/11

December 18th, 2011, Tomasz Rychlicki

The Association of Leaders of Local Civic Groups (SLLGO) requested the Polish Prime Minister Donald Tusk to disclose the correspondence, including e-mails, of members of the Council of Ministers and their assistants, that concerned the revision of the Polish Act of 6 September 2001 on access to public information – API – (in Polish: Ustawa o dostępie do informacji publicznej) Journal of Laws (Dziennik Ustaw) No. 112, item 1198, with subsequent amendments. The Prime Minister refused, arguing that e-mails are not public information, because it is internal correspondence. The SSLGO filed a complaint for failure to act.

The Voivodeship Administrative Court in Warsaw in its judgment of 1 December 2011 case file II SAB/Wa 295/11 agreed with the SSLGO and decided that e-mail correspondence in this case was not private, but it should be deemed as public information and properly disclosed as it was requested by the Association, because it concerned the amendment to the API. The Court noted that such e-mails related to public affairs, this issue was previously mentioned by the Voivodeship Administrative Court in its judgment of 16 January 2004 case file II SAB 364/0.

Trade mark law, case VI SA/Wa 334/11

December 13th, 2011, Tomasz Rychlicki

Julius Sämann Ltd., the owner of the figurative trade mark WUNDERBAUM IR-0579396, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark Forest Fresh R-183901 owned by S&S Smiczek & Smiczek Hanna Smiczek. Both trade marks were registered for similar goods in Class 5, mainly air freshening products. Julius Sämann Ltd. claimed that because of the similarity of goods there is a risk of misleading the public, in particular by evoking associations with the earlier mark. The company provided also evidence on reputation of its trade mark.

iR-0579396

The Polish Patent Office invalidated the right of protection. The PPO decided that three required conditions had to be cumulatively met in this case: i) the reputation of the earlier mark, ii) the similarity or identity of signs, iii) if it without due cause would bring unfair advantage to the owner of the later trade mark or be detrimental to the distinctive character or the repute of the earlier trademark. The PPO noted that the case law distinguishes between absolute and relative methods of assessing reputation. The first one considers knowledge of the mark and takes into account primarily the percentage of a certain degree of its recognition on the market. The relative method emphasizes different criteria, including the degree of the recognition of the trade mark, the market share in terms of quantity and value of goods sold, the extent and duration of product advertisements marked by the sign, territorial and temporal scope of its use, licenses granted, quality of the goods, the value of the sign in the evaluation of independent financial institutions, the size of expenditures incurred in connection with the promotion of trade, as well as relationship price of substitute goods. The evidence material can be public opinion polls, prizes and awards, press releases, ratings, reports, invoices and other commercial documents, as well as various promotional materials. The Polish Patent Office has adopted a mixed methodology in this case, and ruled that both the evidence on reputation, that was claimed and established before the date of application of the contested trade mark, as well as documents from the later period, strengthen the recognition of reputation of the trade mark WUNDERBAUM IR-0579396. The PPO decided that both trade marks are similar in visual, aural and conceptual aspects. The PPO noted that the market existence of a trade mark which consumers associate with reputation of another sign, harm the interest of the owner. S&S Smiczek & Smiczek Hanna Smiczek filed a complaint against this decision.

R-183901

The Voivodeship Administrative Court in Warsaw in its judgment of 2 June 2011 case file VI SA/Wa 334/11 dismissed it. The Court agreed with the the assessment of the PPO, and repeated that an entrepreneur, who for the goods of the same type, chooses a sign that is similar to a trade mark with earlier priority, given that there is an infinite number of signs to be selected, acts at its own risk. This judgment is not final yet. A complaint can be brought to the Supreme Administrative Court.

Trade mark law, case VI SA/Wa 1236/11

December 6th, 2011, Tomasz Rychlicki

LEK, tovarna farmacevtskih in kemicnih izdelkov filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word trade mark KETOGEL R-190416 registered for Polpharma S.A. for goods such as pharmaceuticals. LEK argued that KETOGEL is similar to its word trade mark KETONAL. The PPO dismissed the opposition, and LEK filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 7 September 2011 case file VI SA/Wa 1236/11 dismissed it. The court noted that in case of the assesment of similarities between trade marks, the number of syllables, their sound and touch have the importance in deciding on phonetic similarity. Visual similarity is assessed in terms of number of words or letters in general, the number of words or letters of the same type, their shape, layout and color. Consequently, a sign containing an altered distinctive element, even if there is some resemblance to other parts, will not be similar. The Court took into account the specificity of the pharmaceutical market, and excluded the likelihood of confusion in this case.

Trade mark law, case VI SA/Wa 1319/11

November 28th, 2011, Tomasz Rychlicki

Designer drugs are well-known as “dopalacze” in Poland (in English: boosters). They were freely available on the Polish market because of the legal loophole in the Polish Act of 29 July 2005 on Counteracting Drug Addiction. In 2010, after different mainstream media reported on several cases involving health problems caused by such drugs, the Polish Government ordered a nationwide crackdown on shops selling designer drugs, memory enhancers or noothropic substances.

In 2008, the Polish company KONFEKCJONER Sp. z o.o., one of the biggest suppliers of these products, tried to register the word trade mark DOPALACZE.com Z-345673 in Classes 30, 33, 34 and 39, but the Polish Patent Office refused to grant the right of protection. KONFEKCJONER filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 4 October 2011 case file VI SA/Wa 1319/11 dismissed it, and held that the word trade mark DOPALACZE.COM was intended to designate, inter alia, herbal substitutes for coffee, alcoholic beverages, tobacco and smokers’ articles, and delivery of goods and parcels. The recipients of these goods and services are generally understood as the broadest public possible, and the “average consumer” is reasonably well informed and reasonably observant and circumspect. The Court ruled that the sign in question may suggest that the consumption of goods bearing this trade mark may cause specific narcotic effect. There was a sufficiently serious risk that consumers receive wrong message regarding the goods. Although, products such as coffee, cigarettes, tobacco, function as goods that add energy, they are treated as stimulants or tranquilizers, however, such a trade mark may suggest that the goods have been strengthened to induce a certain narcotic effect. Smokers’ articles are deemed as ancillary to the aforementioned goods for which the registration was sought, the same applies to delivery of parcels and goods.

Trade mark law, case VI SA/Wa 1291/11

November 23rd, 2011, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark LAW24.pl applied for the Polish law firm Komarnicka Korpalski Kancelaria Prawna sp.j for services in Class 35 such as advising on business and business management consultancy, in Class 36 such as financial consultancy and financial and accounting activity, and in Class 42 such as legal services.

Z-341137

The PPO pointed out that the sign was applied for broadly defined legal services, and it cannot be registered because it lacks sufficient distinctive character, therefore it cannot be the subject of exclusive rights as others would have been deprived of the possibility to use it. The PPO noted that the applied trade mark is a company name, but there are different regulations regarding company names and the names of individuals. The PPO ruled that the right to the company name is not absolute, effective in relation to all (erga omnes). The PPO stated that the case of each applied trade mark is always considered individually on its specific conditions, so the argument that there is plenty of registered trade marks that include the word “law”, and the PPO should also grant the right of protection in this case, was rejected The PPO did not agree with the argument that recent visits to the website could prove that the trade mark in question has acquired secondary meaning. According to the PPO, the applicant has not submitted any evidence documents to confirm it. Komarnicka Korpalski Kancelaria Prawna filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 31 August 2011 case file VI SA/Wa 1291/11 dismissed it. The Court agreed with the PPO and held that Internet address identifies a legal or natural person, but this identification is not equivalent, that the services provided by such person are marked with the same deisgnation.

Trade mark law, case VI SA/Wa 396/11

November 8th, 2011, Tomasz Rychlicki

EAST SEA POLAND Spółka z o.o. filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark BIEN DÔNG R-204010 registered for services in Classes 36, 39 and 43, and owned by AEROCENTER TRAVEL Trinh Huy Ha.

R-204010

EAST SEA claimed that this mark is descriptive, because in the translation from Vietnamese to Polish language, it is the name of the South China Sea – Biển Đông. This name is the official designation of the geographic area used in the Socialist Republic of Vietnam and as such it should remain free to use on the market. The company argued that this trade mark may lead to consumers’ confusion, in particular those of Vietnamese nationality, as to the nature or characteristics of services provided by the owner, because the sign in its content relates to the maritime area, which is associated with maritime transport, and not to the services that it was registered for. EAST SEA argued that the Bien Dong designation may be misleading as to the place where services are provided, as the owner provides its services in Poland and not in Vietnam. It is worth mentioning that EAST SEA applied for three trade marks that include BIEN DONG words.

Z-290648

AEROCENTER TRAVEL argued that the Bien Dong is strictly abstract expression for the average Pole who doesn’t know what it means in Vietnamese. The Company disagreed, that this is false or fraudulently marked geographical origin of their services, since none of the customers going to the office in Warsaw would expect it to be in Vietnam at the South China Sea.

The Polish Patent Office dismissed the opposition and EAST SEA POLAND decided to file a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 13 May 2011 case file VI SA/Wa 396/11 dismissed it and held that the Polish Industrial Property Law – in principle – does not preclude the registration in Poland as a national trade mark, the word that is taken from the language of another country in which language this word is devoid of distinctive character or it is descriptive for the goods or services for which the registration was sought, unless recipients/consumers in the State in which registration is sought, would be able to read the meaning of this word.

Trade mark law, case VI SA/Wa 562/11

November 4th, 2011, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word trade mark flex fuga Z-297616 applied for by MAPEI POLSKA Sp. z o.o. for goods in Class 1 such as adhesives based on plastics and resins, silicone mortars, for goods in Class 6 such as decorative moldings, profiles, metal profiles, and for goods in Class 19 such as decorative moldings, profiles, profiles not made of metal, masonry mortars, dry plaster, mortars for grouting and welding.

The PPO decided that this trade mark is devoid of sufficient distinctive character and it lacks any additional elements, such as verbal or graphic, which would allow potential purchasers to identify the goods with the source of the origin of goods. The PPO noted that a fuga is a weld/joint between adjacent wall elements and flex means flexible in English.

MAPEI filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in Warsaw in its judgment of 26 August 2009 case file VI SA/WA 1017/09. MAPEI decided to file a cassation complaint. The Supreme Administrative Court in its judgment of 13 January 2011 case file II GSK 19/10 overturned the judgment of the VAC and held that the VAC relied on the erroneous assumption that the buyers (users) of goods bearing the trademark at issue are those who know English or use the Internet every day, which was not supported by any evidence. Besides, the trade mark flex fuga was applied for not only various types of mortars but also for various types of decorative moldings, profiles, sections of metal and non-metallic, and in relation to those goods it is difficult, to talk about “cut or bent” joint or weld.

The case went back to the Voivodeship Administrative Court. The VAC in its judgment of 9 May 2011 case file VI SA/Wa 562/11 held that the fact that the Polish Patent Office has granted the rights of protection for a number of trade marks containing the word “flex” or the word “flex” in combination with other words, should prompt the PPO to a broader examination of the merits of the MAPEI’s trade mark application. Thus, the PPO’s view that even if MAPEI relied on other decisions issued by the Polish Patent Office, it could not affect the assessment of the submitted application and its final examination, is not justified. The VAC noted that the PPO could change its position on the regularity of the grant of rights of protection, in which one element was the word “flex”, but it should justify such change in detail. The case law of the PPO may therefore be subject to change, if the authority demonstrates that there are reasonable grounds. However, any unfounded inconstancy of the opinion of the public body constitutes an infringement of the administrative procedure, because it may result in undermining citizens’ trust in state bodies and adversely affect the legal culture of citizens, and thereby cause a breach of the constitutional rule that all persons shall be equal before the law and all persons shall have the right to equal treatment by public authorities.

Trade mark law, case VI SA/Wa 875/11

October 27th, 2011, Tomasz Rychlicki

Juliusz Marek Nabiałek who owns the word-figurative trade mark Platan R-210901, filed a request for invalidation of the word-figurative trade mark PLATANUS OGRODY NATURALNE R-210602 registered for Przemysław Sochański. Mr. Nabiałek claimed that both signs are similar and cause the risk of misleading the public as to the origin of goods and services, especially since most goods and services are identical.

R-210901

Mr. Sochański claimed that he cooperated with Mr. Nabiałek in years 2001-2005. He emphasized that Mr. Nabiałek, without his knowledge or consent registered the trade mark Platan in 1995, but it was the name of a company that was founded by Sochański. In March 2007, he learned about this registration when he was served with the cease and desist letter prohibiting the use of the name Platan. Therefore, Sochański applied on 15 March 2007, for the right of protection for PLATANUS OGRODY NATURALNE trade mark. Therefore, he thought that the request for invalidation is a malicious and solely personal action. Mr Nabiałek decided to narrow the request only for services in Class 42 such as services in architecture, biological research, advice on environment protection. The Polish Patent Office invalidated the right of protection. Sochański filed a complaint against this decision.

R-210602

The Voivodeship Administrative Court in Warsaw in its judgment of 3 October 2011 case file VI SA/Wa 875/11 overturned the decision of the Polish Patent Office and held it unenforceable. The Court ruled that both trade marks are not similar and the similarity of goods and services is reduced only to their common numbering according to the Nice Classification. The VAC ruled that there was violation of the provisions of the administrative procedure, because the PPO did not consider all of the evidence required to decide the case, and has not indicated why certain facts were accepted as proven, and why others were denied the credibility and probative value.

Trade mark law, case VI SA/Wa 617/11

October 24th, 2011, Tomasz Rychlicki

On 17 October 2007, the Polish Patent Office registered the word trade mark Auto-dap R-197829 for Dariusz Chudobiński from Łódź. Andrzej Teodorczyk who owns Auto Serwis Dap, that is located in Pabianice town, filed a notice of opposition.

Mr Teodorczyk claimed that Mr Chudobiński acted in bad faith. He also noted that the sign in question was widely known in Pabianice and it was associated with the automotive garage operated by him under the name “AUTO DAP”. The garage was located in the immediate vicinity of the garage owned by Mr Chudobiński. Mr Teodorczy argued that the DAP company was founded by him in 1984, and its designation is an abbreviation of three names. Mr Teodorczyk pointed out that he had shares in the company AUTO-DAP sp. z o.o., that was also founded by Mr Chudobiński and his wife, however, he never transferred the right to the AUTO DAP sign.

The PPO dismissed the opposition and ruled that the Company AUTO-DAP sp. z o.o. has the property right to its company name, and Mr Chdobiński received a proper authorization to file for a trade mark Auto-dap for his own. The PPO ruled that a short abbreviation DAP, as an abstract term, can not be attributed to specific individuals, as their personal interest due to the order of letters in this expression. These letters can have different meanings for the average customer in perception of this determination. The Patent Office did not agree that Auto-dap trade maw was filed in bad faith. Mr Chudobiński submitted evidence documents that he used the name DAP in his business. Mr Teodorczyk, as one of the founders of the AUTO-DAP company, has agreed (and did not oppose) the use of the company’s name (firm) in this way. He used the same DAP designation in his business activities as an individual and in a company which shares has has sold to the owner of the registered trade mark. Mr Chudobiński filed a trade mark application according to the authorization and undertook the obligation to transfer the disputed trade mark on the company, for each request. It was therefore an application that has been made in good faith – the mark was used by the company for nearly 6 years – and the authorization for its registration by Mr Chudobiński did not violate the provisions of the Articles of Association. Mr Teodorczyk filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 16 June 2011 case file VI SA/Wa 617/11 dismissed it. The Court ruled that Mr Teodorczyk did not prove that Mr Chudobiński wanted to block business activities of Mr Teodorczyk for the reason that he has registered the disputed mark. The VAC noted also that Polish law provides that a right of protection will not be granted for a trade mark in respect of identical or similar goods, if the trade mark is identical or similar to a trade mark which, before the date according to which priority to obtain a right of protection is determined, has been well-known and used as a trade mark in respect of the goods of another party. However, this trade mark has to be well-known on the whole territory of the Republic of Poland or on a substantial part of it. The recognition and knowledge of the trade mark only in less than a significant part of the Polish territory, even if it is intense, does not create the right to a well-known trade mark. Knowledge of the trade mark in one city and its surroundings, even if it’s a large one, is not enough for the sign to be regarded as a well-known trade mark.

E-access to public information, case IV SA/Gl 1002/11

October 14th, 2011, Tomasz Rychlicki

A journalists requested one of the Polish companies to disclose information about the earnings of its directors (CEOs) and members of the supervisory board. He also wanted to know how many prizes, bonuses and other financial inducements were received by the CEO and the board members in the last three years, and how much the company has spent on advertising and promotion, how much spending and subsidies were distributed for non-governmental organizations, staff training, banquets and small meetings. He also demanded the indication of dates, names and amounts, the method of selecting contractors. This request was based on the provisions of the Polish Act of 6 September 2001 on access to public information – API – (in Polish: Ustawa o dostępie do informacji publicznej) Journal of Laws (Dziennik Ustaw) No. 112, item 1198, with subsequent amendments. The journalist noted that the expected response should be sent to him via e-mail. The company provided information only on salaries, and refused to disclose other information that was subject to the request. The decision has been sent in the form of an electronic document to an e-mail address provided by a journalist. The company noted that other information belong to the category of “processed information”, therefore, the applicant has to indicate why the disclosure of such information is particularly important for the public interest. The journalist filed a complaint against this decision.

The Voivodeship Administrative Court in Gliwice in its judgment of 19 September 2011 case file IV SA/Gl 1002/11 rejected it, because of procedural reasons. However, the VAC held that the administration decision issued in the form of an electronic document must be signed by a secure electronic signature that is verifiable by a valid qualified certificate. The administrative decision that does not meet these requirements can not be regarded as signed, and therefore is not valid according to the provisions of Article 14 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments.

Article 14. Principle of written proceedings
§ 1. All matters shall be disposed of in writing or in the form of an electronic document as defined in the Act of 17 February 2005 on Informatization of Operation of Entities Performing Public Tasks (Journal of Laws No. 64, item 565, as ammended), to be served by means of electronic communication.

The VAC also noted that in this case the decision has not been delivered in the proper form.

Article 110.
The public administration body issuing the decision shall be bound by it from the time of its service or publication, unless the Code provides otherwise.

Although in this case the content of the decision was known but it was not delivered in the form provided in the provisions of the APC. The decision was in fact delivered in writing but it was served by electronic means and in a way that was inconsistent with the provisions of APC, which could not be considered as effective service.