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Archive for: Polish Patent Office

Trade mark law, case

May 17th, 2012, Tomasz Rychlicki

On 26 October 2009, the Polish Patent Office registered the figurative trade mark R-221206 for goods in Classes 16, 35 and 44. This sign was applied for Fundacja na Rzecz Osób Niewidomych i Niepełnosprawnych “POMÓŻ I TY” z Gdyni (the Foundation for the Benefit of the Blind of Disabled People “YOU CAN HELP TOO”).

R-221206

European Union represented by the Commission filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection, claiming that the trade mark incorporated symbols of the EU flag. The Adjudicative Board of the PPO in its decision of 11 May 2012 case no. Sp. 468/11 dismissed the request anddecided that the questioned trade mark is quite distinct from the heraldic of the EU flag, with no resemblance to it.

This decision is not final yet. The EU may file a complaint to the Voivodeship Administrative Court. See also “Trade mark law, case Sp. 158/08” and “Trade mark law, case II GSK 555/09“.

Access to public information, case I OSK 1550/11

May 7th, 2012, Tomasz Rychlicki

On 22 November 2010, Bogusław Kler, a Polish patent and trade mark attorney, requested the President of the Polish Patent Office to disclose public information concerning the word trade mark PRINCE POLO R-148617, in order to know, whether during the examination, the trade mark POLO R-69429, or other marks containing this word were taken into account, and in particular, if the expert who was proceeding and examining the trade mark application, noted and listed any signs with the word “polo” in the examination card of the trade mark PRINCE POLO R-148617. In addition, Mr Kler requested for information on whether in a possible conflict between “Prince Polo” and the earlier “POLO” signs, the examiner considered any settlement actions of the owners of such trade marks, indicating that he is not requesting the full texts of documents, but seeking to confirm whether such documents if any, were submitted to the trade mark file and they were used in the assessment for the trade mark PRINCE POLO.

The President of the PPO expressed the opinion that the examination card of the trade mark PRINCE POLO R-148617 is not deemed as public information, because it is not directed the parties of the proceedings, and therefore it cannot be disclosed. With regard to information on materials concerning possible settlement between the trademark owners, the President explained that such information can be obtained by directly asking the entitled entities. At the same time, the President pointed out that decisions on the granting of exclusive rights belong to independent experts, and the requested filed by Mr Kler can be read as an unfounded and unjustifiable attempt to control of examinations conducted by experts and the procedures for the granting of exclusive rights. The President argued that such control process of the legality of decisions undertaken by the Polish Patent Office falls within the competence of administrative courts. The method of preparing and filing of the examination card of a trade mark is not regulated in any legislation being in force. Information to be included in it depends on the expert. The examination card is somehow a reflection of thinking of a person who was handling a given case.

Bogusław Kler filed a complaint for failure to act (administrative inaction). Mr Kler argued that the President of the PPO did not consider his request or did not issue a refusal decision.

The Voivodeship Administrative Court in its judgment of 13 May 2011 case file II SAB/Wa 88/11 dismissed the complaint. The VAC held that information requested by Mr Kler is not public, in particular, these are not public data. The Court held that the examination card is not an official document since it does not contain a declaration of will/intent or knowledge of a public official. Based on the card, it is not possible to unambiguously determine conditions, that were followed by the authority granting the right of protection for a trade mark. The card is a working internal document of the PPO, which provides information of operational activities aimed at a comprehensive assessment and examination of the validity and legitimacy for granting the protection of the sign applied for. Mr Kler filed a cassation complaint.

The Supreme Administrative Court in its judgment of 1 December 2011 case file I OSK 1550/11 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that according the Constitution of the Republic of Poland, a citizen should have the right to obtain information on the activities of organs of public authority as well as persons discharging public functions. Such right should also include receipt of information on the activities of self-governing economic or professional organs and other persons or organizational units relating to the field in which they perform the duties of public authorities and manage communal assets or property of the State Treasury. Limitations upon the right of information may be imposed by the Act solely to protect freedoms and rights of other persons and economic subjects, public order, security or important economic interests of the State. The principle of the “right to information” provided in the Constitution sets basic rules of interpretation of this right. It is a constitutional right, therefore, the law defining the procedures for access to information should be interpreted broadly, and any exceptions to this right should be construed and interpreted narrowly. This implies the use in relation to these acts of interpretation, which favor expanding rather than narrowing the obligation to disclose information. The enumeration, what is deemed as public information, is provided in the Polish Act on Access to Public Information, however this enumeration includes exemplary situations, and it does not cover all cases in which information is disclosed. The Court noted that public information is each information or data that was created or referred to the widely defined public authorities, or was created or referred to other entities performing public functions in the execution of tasks of public authority. The Supreme Administrative Court shared the view that all files of entire administrative proceedings conducted by a public authority, constitutes public information – including both documents created and held by the authority in connection with a particular case. Therefore, the Court held that, in principle, all that is in the file of the proceedings, regardless of whether it will be a public document or private, should be disclosed. It does not matter whether the document in the file is an “internal” or “working”. Even giving up the assumption that the whole proceedings constitute public information, it cannot be excluded that given documents from these files have such nature. In each case, every request for disclosure of public information requires a detailed analysis. Only as a result of such analysis, the authority should decide whether the requested information is public, followed by what standards govern the procedure of its disclosure.

Trade mark law, case Sp. 587/09

April 19th, 2012, Tomasz Rychlicki

On November 2006, the Polish Patent Office granted the right of protection for the word-figurative trade mark EC R-190902 to PPH EVELINE COSMETICS Piotr Kasprzycki, for goods in Class 03 such as skin care and beauty products for women, men, children and teens, perfumes, washing, cleaning, scouring and bleaching preparations, tissues, cotton wool, cotton buds and sticks for cosmetic purposes, and in other goods in classes 05, 16, 21, 42 and 44.

R-190902

Chanel SARL filed a notice of opposition. The company argued that the trade mark EC R-190902 is confusingly similar to many of Chanel’s trade marks, such as CHANEL R-33924 that was registered with the earlier priority of 2 September 1947 for goods in Class 03 such as soaps and toilet preparations, or the figurative trade mark R-57346 that was registered with the priority of 24 March 1979 for goods in Class 03. Chanel also claimed that the right of protection for the trade mark EC should not be granted because it brought unfair advantage to EVELINE COSMETICS.

R-143536

The Adjudicative Board of the Polish Patent Office in its decision of 15 March 2012 case no. Sp. 587/09 invalidated the right of protection. The decision is not final yet. EVELINE COSMETICS may file a complaint to the Voivodeship Administrative Court in Warsaw.

Trade mark law, case VI SA/Wa 1530/11

April 16th, 2012, Tomasz Rychlicki

On May 2007, the Polish Patent Office granted the right of protection for the word trade mark Vondutch R-190394, that was applied for by “SEREN TEKSTIL” Sp. z o.o. for goods in Class 25 and Class 35. The Irish company V D Europe from Dublin filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. V D Europe argued that it is the owner of the CTM VON DUTCH no. 000336495, that was registered with the earlier priority of 8 August 1996 for good in Class 25. On 20 January 2010, the patent attorney representing V D Europe informed the PPO that the company Royer Brands International Sàrl is the new owner of the CTM VON DUTCH. The representative provided proper evidence of total transfer of ownership, and the POA from the new owner.

CTM 000336495

The Adjudicative Board of the Polish Patent Office in its decision of 3 February 2010 case no. Sp. 499/08 dismissed the opposition, and decided that Royer Brands International has no rights to conduct proceedings that were started by another company. The PPO ruled that Royer Brands International is not related structurally, financially, or linked in any legal way with V D EUrope. The PPO decided that the request was unfounded, because the owner sold its rights to a trade mark. Royer Brands International filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 23 November 2011 case file VI SA/Wa 1530/11 repealed the contested decision, ruled it unenforceable, and returned the case to the PPO for further reconsideration. The Court found that Royer Brands International has confirmed all the declarations of will and actions that were taken during the opposition proceedings by every person acting on the basis of previously submitted POA. In the opinion of the Court, the wording of Article 162 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, was deciding in the present case.

Article 162
1. The right of protection for a trade mark may be assigned or be subject to succession. The provisions of Article 67(2) and (3) shall apply accordingly.

1¹. The right of protection for a trade mark may be transferred to the organizations referred to in Articles 136 and 137 as a collective trade mark or collective guarantee trade mark respectively or to a number of entities as a collective right of protection.

1². Transfer of the right of protection, referred to in paragraph (1¹) may be effected only with the consent of the parties who enjoy that right.

1³. Entry in the trade mark register of the transfer of the right of protection, referred to in paragraph (1¹) after the regulations governing use of the trade mark, referred to in Article 122 (2), Article 136(2) or Article 137(1) have been submitted.

1⁴. A collective right of protection may be transferred to a single party as a right of protection for a trade mark.

2. (deleted)

3. The right of protection for a collective trade mark may be assigned as a joint right of protection to the undertakings grouped in the organisation referred to in Article 136. The contract of assignment shall determine the rules governing the use of such trade mark to the extent to which it is practised in respect of the regulations referred to in Article 122(2).

3¹. A collective right of protection may be transferred to the organizations referred to in Articles 136 and 137 as a collective trade mark or a collective guarantee mark. A contract for the transfer of the right should specify the rules governing use of that trade mark to the extent as it is provided for in respect of the regulations referred to in Article 136(2) and Article 137(1) respectively.

4. The right of protection for a trade mark may also be assigned in respect of certain goods for which the right of protection has been granted, if the goods for which the trade mark remains registered on behalf of the vendor are not of the same kind. Once assigned, the right in question shall be dealt with as independent of the right enjoyed by the vendor.

5. The contract of assignment of a share in the joint right of protection shall be valid subject to the consent given by all of the joint owners.

6. Paragraphs (1), (3) to (5) shall apply accordingly to the right deriving from an application filed with the Patent Office, for which no right of protection has yet been granted.

This provision introduces a general principle of transferability of the right of protection for a trade mark. The disposal of rights of protection may be primarily based on a contract of sale, exchange, or a contract of donation. However, it should be also stressed that the agreement transferring the right of protection shall be in writing, in order to be valid. Also, the relevant provisions of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, published in 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, were applicable in this case.

Article 30.
§ 1. Legal capacity and the capacity to enter into legal transactions shall be determined according to the provisions of civil law, unless specific provisions provide otherwise.

§ 2. Natural persons with no capacity to enter into legal transactions shall act through their legal representatives.

§ 3. Parties not being natural persons shall act through their legal or statutory representatives.

§ 4. In matters concerning transferable or hereditable rights, in case of a transfer of the right or death of the party during the pendency of the proceedings the legal successors of the party shall join the proceedings in lieu of the party.

In the opinion of the Court, Royer Brands International, under the law being in force in the Republic of Poland, has not only become the legal successor to the CTM VON DUTCH, which was the results of the valid contract of transfer of the Community trade mark, that was accepted and confirmed by OHIM in 2009, but is also the legal successors in the opposition proceedings. This means that the PPO has committed a violation of the provisions of substantive law (regulations included in Article 162 of the IPL) through their incorrect interpretation, and consequently its improper application in the case. Furthermore, the Court ordered the PPO a careful analysis of the substantive merits of the opposition, including the similarity of the signs.

Procedural law, case VI SAB/Wa 236/11

March 27th, 2012, Tomasz Rychlicki

On May 2009, FAKRO PP sp. z o.o. requested the Polish Patent Office to invalidate the European patent No. PL/EP 1706557 “window and insulating frame kit” that was granted under the European Patent Convention on the territory of the Republic of Poland. On December 2010, the company filed a complaint to the Voivodeship Administrative Court in Warsaw, arguing that the Polish Patent Office did not take any substantive action to decide the case. The PPO argued that it set the hearing date in February 2011, but the hearing was adjourned, and the Adjudicative Board of the PPO ordered the owner of the challenged patent to supplement the evidence in the case within 2 months from the date of the publication of the order. In addition, the PPO noted that the applicant’s representative requested a correction and supplement the minutes of the hearing held in February 2011, a hearing on this matter was set for June 2011. The Voivodeship Administrative Court in its order of 9 June 2011 case file VI SAB/Wa 73/10 discontinued the proceedings. The Company filed a cassation complaint. The Supreme Administrative Court in its order of 25 October 2011 case file II GSK 2108/11 repealed the contested order and sent it back for the reconsideration. The SAC held that the VAC should dismiss the complaint or decide on the failure to act.

The Voivodeship Adminsitrative Court in Warsaw in its judgment of 3 January 2012 case file VI SAB/Wa 236/11 ruled that the provisions of the Code of Administrative Procedure governing time limits for settling cases shall not apply to cases heard by the Polish Patent Office in litigation procedure, but the PPO should make all-out efforts to settle the case within six months from the submission of the request. The VAC ruled that the case for invalidation of the patent at issue was pending before the PPO for more than two and a half years and even during the proceedings before the Courts, it did not end in any decision. Inactivity of the Polish Patent Office in this case was obvious.

Trade mark law, case VI SA/Wa 1242/11

March 26th, 2012, Tomasz Rychlicki

On 23 March 2008, the Polish Patent Office granted the right of protection for the word-figurative 3D trade mark PŁ 1764 R-205770, that was applied for by the Polish company Fabryka Wódek POLMOS ŁAŃCUT S.A, for goods in Class 33 such as vodka. The trade mark represents a glass bottle with a blade of grass put inside, and the crest on the bottle.

R-205770

POLMOS BIAŁYSTOK S.A., the company that was the owner of the word-figurative trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081, registered with the earlier priority of 30 August 1985, for goods in Class 33, filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. POLMOS BIAŁYSTOK claimed similarity of signs and identicality of goods. The Company argued that a blade of grass identifies its product’s image, and the long-term presence on the market caused that the trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081 created the belief of the recipients of this type of goods, that the alcoholic product with a grass motif comes from POLMOS BIAŁYSTOK. The Company also claimed that its trade mark is the reputed one, and provided rich evidence material including certificates of quality and market position of vodka sold in bottles with a blade of grass, market research results and reports confirming a strong position of trade marks owned by POLMOS BIAŁYSTOK, as well as articles published in specialized trade magazines. POLMOS BIAŁYSTOK claimed that POLMOS ŁAŃCUT acted in bad faith because its strategy and intention was to create and to file for the right of protection for a product that would look like the brand of “Żubrówka” vodka, by giving it a full set of protected characteristics of the trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081, and this situation happened long before the filing date of the questioned sign.

R-62081

The Adjudicative Board of the Polish Patent Office dismissed the request and decided that the comparision of POLMOS ŻUBRÓWKA BISON BRAND VODKA and PŁ 1764 trade marks gave no similarities. The blade of grass inside a bottle may give potential customers certain associations that it is a vodka based on wisent grass. The PPO relied on the provisions of § 3 of the Minister of Agriculture and Rural Development of 25 January 2007 on the definition of requirements for certain spirit drinks with geographical indications relating to the Polish territory, which specifies requirements for a spirit drink “Herbal Vodka from the North Podlasie Lowland aromatised with an extract of visent grass. The PPO has decided that the vodka producers could use the trade marks containing a blade of grass to indicate the type of vodka. The PPO ruled that these signs are examples of commonly used vodka bottles that were sold in the 80s and 90s of the last century. Such bottles are also present in considerable numbers in the Polish market. Thus, these signs per se do not possess distinctive characteristics. The Adjudicative Board noted that legal commentators emphasizes that the packaging of a product is now deemed as a “silent salesman”, and its appearance affects decisions of customers. A distinctive and visually appealing packaging may cause the client to choose the particular product. The PPO cited K. Jasińska, Naśladownictwo opakowań produktów markowych w świetle prawa własności intelektualnej (in English: Imitation of packagings of branded products in the light of intellectual property rights), Warszawa 2010. The PPO found these arguments relevant to the package created by POLMOS ŁAŃCUT which, in PPO’s opinion differs from other packages available on the market. POLMOS BIAŁYSTOK filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 24 August 2011 case file VI SA/Wa 1242/11 repealed the contested decision and ruled it unenforceable. The VAC decided that the analysis of similarity between the signs including its reputation, in this case, was not exhaustive. The PPO did not consider the dominant elements that draw the attention of the buyer. Although PPO stated that the compared trade marks are 3D signs, but the examination of these elements was reduced to comparison of packages only, i.e. bottles. Although, the PPO stated that as a principle, the visual aspect of a 3D sign, is the shape of package and its content, but these two issues (the shape and contents) were separated in the analysis carried out in this case. The Court found that the long time existence of the characteristic element of 3D signs owned by Polmos Bialystok that were intended for designating vodka products and alcoholic beverages – a blade of grass placed in a simple, transparent bottle, as a whole can easily sink into the minds of customers and build the strength that distinguishes this kind of packagings. The Court pointed out that POLMOS BIAŁYSTOK provided evidence that the original żubrówka can be recognized by a wisent grass blade in the bottle. This would mean that for consumers, contrary to the assessment of the PPO, this 3D element constitutes the dominant part of the trade mark, and it can also influence the perception of the trade mark reputation and the need for protection against dilution. The VAC noted that this case involved more than 20-year presence in the market of a bottle with a grass inside, that was associated with POLMOS BIAŁYSTOK. However, in situation, when the package is transparent, placing a characteristic element inside of the packaging, determines distinctiveness of the whole sign, e.g. two similar bottles. The distinctive 3D form – a blade of grass in the bottle increases the message of each of the word trade marks, brings more originality to signs that are protected for over 20 years. There was no doubt that the floating grass in the bottle is the original message that distinguishes the goods of POLMOS BIAŁYSTOK, and is attributed to the origin of goods produced by this particular company. It was impossible to overlook the fact that consumers are seeing a bottle with a characteristic blade of grass, that is associated by them not only with visent vodka, but they also have a guarantee that this is the original product whose reputation was proved by complex evidence. This means that customers choose a product, guided by the attractiveness of its form, because they “see” in this product a trade mark that originates from POLMOS BIAŁYSTOK, whose quality is known to them. The fact is that all signs have a distinctive element. The Polish Patent Office erred by not attaching any importance to it, despite the fact that POLMOS BIAŁYSTOK was the first company that introduced to market a product with such a distinctive element: a long blade of visent grass.

See also “Trade mark law, case VI SA/Wa 2038/09“.

Trade mark law, case VI SA/Wa 2051/11

March 21st, 2012, Tomasz Rychlicki

On May 2008, the Polish Patent Office granted the right of protection for the word trade mark COOL RIVER R-205208 in Class 3. This sign was applied for by the Polish company Firma Handlowa A & S PARFUME FACTORY Marek Asenkowicz from Katowice.

ZINO DAVIDOFF SA filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. DAVIDOFF argued that COOL RIVER is similar to its trade marks such as DAVIDOFF COOL WATER R-71968, COOL DIVE IR-0850699, Cool Water IR-0615313. All these signs are intended to indicate the same goods as the questioned trade mark. DAVIDOFF also claimed that its trade mark COOL WATER IR-0812386 is reputed one. Moreover, the trade mark COOL RIVER has been applied for in bad faith, because A & S PARFUME FACTORY knew about the existence of earlier marks owned by DAVIDOFF. The sale by A & S of perfumes in almost identical packagings, as packagings used by DAVIDOFF was the irrefutable evidence of the use of reputation of DAVIDOFF’s trade marks and the application of COOL RIVER in bad faith.

IR-0615313

The Adjudicative Board of the Polish Patent Office dismissed the request in its decision of 7 March 2011 case Sp. 483/09. While considering the visual and aural similarity of trade marks Cool Water, Davidoff Cool Water and Davidoff Cool Water Wave in relation to the questioned trade mark COOL RIVER, the PPO noted that all the words used in these trade mark have the origin of the English language. However, regardless of whether they will be pronounced in accordance with the spellings of the Polish language or in English, they are different in the visual and aural aspects due to the different verbal elements – WATER and RIVER. Furthermore, the PPO ruled that the word COOL, being the same element in all signs, is a common and popular word associated with something cold. The word WATER differs from RIVER in the visual aspect, and their pronunciation is different. The PPO also found that there were no circumstances indicating that A & S applied for its trade mark in bad faith. The burden of proving bad faith was on DAVIDOFF. At the same time, the overall assessment of the circumstances surrounding the consciousness of A & S at the date of trade mark application will decide on its bad faith. In the opinion of the PPO, such circumstances did not occur. Evidence such as the flyer entitled “list of alternative scents”, similar perfume packagings used by A & S as well as printouts from the website showing COOL WATER and COOL RIVER perfumes, were not sufficent to prove bad faith. Davidoff filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 January 2012 case file VI SA/Wa 2051/11 dismissed it. The Court agreed with the PPO that the trade marks are not similar. The VAC also held that the understanding of bad faith should be based on the provisions of the Polish Industrial Property Law. Bad faith occurs if someone applies for the trade mark in order to block other application or in order to block the use of the sign by other entity who uses this trade mark in the market or to take over the company’s market position. Bad faith also exists when someone is filing for a trade mark for speculative purposes, and there was no intent to use the applied sign, and in order to get benefits from the entity that owns such trade mark. Bad faith trade mark application happens when the applicant without due care or being aware, applies for a sign in violation of the rights of another person, or when the applied trade mark is contrary to morality or fair trade practices.

Trade mark law, case II GSK 1033/10

February 22nd, 2012, Tomasz Rychlicki

This is another part of the saga of trade marks consisting of numerals. On March 2003, Agencja Wydawnicza TECHNOPOL Spółka z o.o. applied for the word trade mark 100 PANORAMICZNYCH Z-261876 for goods in Class 16 such as newspapers, charade magazines, booklets, brochures, flyers, calendars, posters, exercise books.

The Polish Patent Office decided that it cannot grant rights of protection for signs which cannot constitute a trade mark, or are devoid of sufficient distinctive character. The PPO reminded that the following are considered as being devoid of sufficient distinctive character (i) signs which are not capable of distinguishing, in trade, the goods for which they have been applied, (ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods, (iii) signs which have become customary in the current language and are used in fair and established business practices. TECHNOPOL filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 24 April 2010 case file VI SA/Wa 410/10. TECHNOPOL filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 November 2011 case file II GSK 1033/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC agreed with allegations of violation of administrative proceedings that was based on erroneous findings that the disputed trade mark could not acquire secondary meaning. The Court noted that when the PPO is assessing whether or not a sign has a sufficient distinctive character, any circumstances accompanying its use in marking the goods in trade should be taken into consideration. Grant of a right of protection under previously mentioned rules may not be denied in particular where prior to the date of filing of a trademark application with the PPO, the trademark concerned has acquired, in consequence of its use, a distinctive character in the conditions of the regular trade. This indicates the possibility of acquiring secondary meaning by descriptive signs. In principle, secondary meaning can only be acquired by signs that are devoid of any distinctiveness, including descriptive or generic designations. Thus, the mere fact that the sign is purely informational does not preclude the acquisition of secondary meaning. Descriptive signs refer to the qualities or characteristics that may affect goods from various manufacturers.

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 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.

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 case Sp. 181/09

August 24th, 2011, Tomasz Rychlicki

The Adjudicative Board of the Polish Patent Office in its decision of 15 September 2010 case Sp. 181/09 invalidated the right of protection for the word-figurative trade mark LEXUS R-194634 registered for the Polish company Astin sp. z o.o. This trade mark was registered for goods and services in Classes 06, 19, 20 and 37. The request for invalidation was filed by Toyota Jidosha Kabushiki Kaisha (Toyota Motor Corporation). Toyota owns renown trade marks LEXUS that were registered with the earlier priority in Poland and in the European Union.

R-194634

The PPO acknowledged the rule that the starting point for finding an infringement of reputation is to determine the similarity of the signs. In the case of combined trade marks (word-figurative), it is always necessary to consider the similarity of all the elements of trade marks being compared, but the verbal elements are crucial. The PPO decided that the dominant and distinctive elements of questioned trade mark and the opposing signs are original and similar words LEXUS. These trade marks are verbally identical. In the opinion of the PPO, the figurative element of the questioned trade mark only exposed and additionally strengthen in the mind of the potential consumer the word element of this trade mark. The PPO also ruled that in the conceptual aspect the sign LEXUS is fanciful one.

Astin claimed that the reputation of LEXUS trade marks has not been sufficiently proved because Toyota did not present evidence on the use in time and territorial use its trade marks, the quality of the goods, market share, and the size of investment in promotions. Toyota presented rich evidence material. These included copies of newspaper articles and advertisements from the years 1992-1999. According to Toyota, these publications indicated that the reputation of LEXUS trade marks has been shaped by long-standing and consistent creation of a positive brand image in the minds of Polish consumers. The PPO noted that there is no legal definition of a reputation. It was the Polish legal doctrine and the courts that have defined the essential criteria for determining what trademark reputation is. Accordingly, the reputation of a trademark is associated with the established opinion among customers about the characteristics of the goods bearing the mark. The reputation is not a simple consequence of the use and circulation of a trademark, but it’s also a well-established and deeply rooted image in the consciousness of buyers of the relevant goods. The reputation of a trademark is a result of the care for the high quality of products, the consistent preservation of a sign on the market by long and intensive advertising. An established reputation of a trademark occurs when the quality of the goods bearing the sign satisfy customers who can easily recognize it and connect with the goods marked by the proprietor, even if it means that the goods are placed on the market for the first time. The reputation of a trademark means its attractive value of advertising, the positive perceptions of the goods bearing the sign. In assessing whether the sign is reputed, one cannot take into the account only the degree of knowledge of a sign among the customers and the extent and intensity of advertising of goods bearing the sign, but also the quality of these goods. Prizes and certificates awarded for the goods bearing the sign, expert opinions and presentation of the goods at trade fairs in order to promote products also show the reputation of the trademark. It was confirmed that the protection of reputed trademarks extends beyond the scope of registration and the selected classes, as reputed trademarks enjoy stronger distinctiveness. However, the burden of proof lies with the holder of the reputed trademark.

The PPO agreed with the judgment of the Voivodeship Administrative Court in Warsaw of 13 March 2006, case file VI SA/Wa 1626/05 that LEXUS trade marks owned by Toyota are renown and reputed signs. See “Trade mark law, case VI SA/Wa 1626/05“. The PPO found that the questioned trade mark LEXUS R-194634 was filed for the registration on the date where Toyota’s trade mark enjoyed high recognition on the Polish market and were associated with the luxury brand of cars and the prestigious image of the brand was the subject of intense marketing efforts of the producer. However, the fact that the trade mark is renown is not a sufficient circumstance to invalidate the right of protection, other conditions must be met, namely if the latter registered trade mark on behalf of another party for any kind of goods, would without due cause bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark.

The PPO held that the existence of the questioned trade mark on the Polish market may negatively affect the distinctive ability of Toyota’s trade marks because consumers may start to associate luxury brand with household tools. In addition, the detrimental nature of the registration in question may be manifested in other ways. For instance, it may cause the renown trade mark to become an ordinary sign that has lost the ability to attract the consumer and the strength with which it interacts to the mass public. This decision is not final yet.

Trade mark law, case VI SA/Wa 1901/10

July 15th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for the word-figurative trade mark VILLA PARK WESOŁA R-171029 owned by “VILLA PARK WESOŁA” Spółka z o.o. The request was filed by MPM PRODUCT Spółka z o.o. the owner of the word trade mark “villa park” R-139436 that was registered with an earlier priority. MPM filed also a civil suit against “VILLA PARK WESOŁA” Spółka z o.o. claiming the infringement of its trade mark rights. However, the court dismissed the injunction.

R-171029

“VILLA PARK WESOŁA” Spółka z o.o. decided to file a complaint against the decision of the PPO. The Company claimed inter alia that even a civil court shared the company’s argument stating that there is no risk of confusion in a group of relevant recipients of services bearing the trademarks at issue.

The Voivodeship Administrative Court in Warsaw in its judgment of 24 March 2011 case file VI SA/Wa 1901/10 dismissed the complaint and ruled that, undoubtedly, the Polish Patent Office, while considering the specific case at issue, acts under certain laws and regulations. In such situation one must understand that the PPO does not decide on the case based upon the judgments of the courts. This, of course, does not mean that if the specific circumstances of the case allow for taking into account the judgment, the Patent Office may not decide on a case in accordance with a convergent judicial decision issued in a similar case. This judgment is not final yet.

Trade mark law, case VI SA/Wa 538/11

July 9th, 2011, Tomasz Rychlicki

This is the continuation of the story described in “Trade mark law, case Sp. 457/08“. Unilever filed a complaint against the decision of the Polish Patent Office in which the PPO decided on the lapse of the right or protection of 3D trade mark R-134678 because of its non-use in the form in which the trade mark has been registered.

R-134678

The Voivodeship Administrative Court in Warsaw in its judgment of 22 June 2011 case file VI SA/Wa 538/11 overturned the decision of the Polish Patent Office and held it unenforceable. However, the Court did not even consider the arguments submitted by the parties. The decision was overturned because of the procedural issues. One of the members of the Adjudicative Board of the Polish Patent Office who was involved in taking the questioned decision did not sign it and later on she retired, therefore, the PPO was not able to obtain her signature. An administrative decision should include at least the name/designation of authority, the addressee of the decision, the conclusion and a signature of the person entitled to issue an administrative decision. If the document lacks a signature, it is not an administrative decision but a draft of such a decision. See also “Procedural law, case IV SA/Po 304/10“. Unilever’s case returns to the PPO where it will be decided on again.

Trade mark law, case VI SA/Wa 2519/10

June 6th, 2011, Tomasz Rychlicki

On 10 March 2006, Red Bull GmbH applied for the color trade mark Z-307435. The trade mark application included the following description “a mark consists of the color blue (2/4/C) and silver (877 C) that fill half of a sign”. However, the company did not specify how both colors fill the applied trade mark, i.e. whether horizontally or vertically. In the decision on the grant of the right of protection that was issued of 2008, the PPO indicated only two categories of the Vienna Classification: 29.01.2004 and 29.01.2006. In its resolution of 2009, the PPO decided to correct the decision as the so-called obvious clerical mistake. The Polish Patent Office justified its resolution based on reproductions of the trade mark that were attached to the trade mark application Z-307435. The PPO decided that the applied trade mark was a figurative one and noted that the trade mark was vertically divided into two parts. The PPO ruled that the category 25.05.2001 (backgrounds divided vertically into two parts) should be also added, because even the applicant stated that the colors fill in half, and presented relevant reproductions of the sign, where one can clearly see two rectangles placed side by side. The PPO added also the category 04.26.2002 (rectangles).

Z-307435

Red Bull filed a complaint against the resolution of the PPO before the Voivodeship Administrative Court in Warsaw. The Company claimed that its trade mark should not be defined in the PPO’s decision as a figurative, but as an abstract colorful trade mark, which accurately reflects its true nature. Red Bull argued that the Polish Patent Office erred in applying categories of the Vienna classification, since the application concerns an abstract colorful sign. Consequently, it was correct to include in a trade mark application Z-307435 only a category that was corresponding to the colors. Red Bull claimed that the Polish Industrial Property law and Article 15(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) allow for the registration of combinations of colors in the Republic of Poland.

The Voivodeship Administrative Court in Warsaw in its judgment of 21 April 2011 case file VI SA/Wa 2519/10 overturned the questioned resolution and held it unenforceable. The VAC ruled that both the doctrine of law and case-law stand on a restrictive view that the admissibility of correcting “clerical and accounting mistake/miscarriage” is determined by the premise of “obviousness” of the mistake. The “obviousness” of a clerical, accounting or another mistake should either result from the nature of the mistake or from the comparison of a decision with its justification or with the content of the request, or other circumstances. An obvious mistake is deemed as an apparent, contrary to the goal, deliberate misuse of the word, apparently erroneous spelling or an omittment. The Court held that the Vienna categories added by the PPO defined the shape of a sign, of which there was no mention in the trade mark application. So, the PPO “clarified” the content its decision of May 2008 by pointing to the shape of the trade mark applied for. By describing the form of a reproduction attached to the trade mark application, the PPO referred to a figure of rectangle and consequently attributed such a form to the trade mark at issue. Meanwhile, a reproductions has its own form, that is independent of the form of the trade mark itself. A form, shapes and dimensions of the reproductions (photographs or photo-copies of a trade mark) are defined in § 9 of the Regulation of the Prime Minister of 8 July 2002 on filing and processing of trademark applications. The Court found that there was no reason to draw conclusions about the shape of the trade mark only on the basis of the rectangular shapes of the reproduction included in the trade mark application Z-307435.

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 DAKAR R-174205 trade mark (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 (registered 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 Sp. 207/10

May 21st, 2011, Tomasz Rychlicki

On 27 May 2008, the Polish Patent Office registered the word-figurative trade mark FORTUNA WARZYWNA KAROTKA STANOWCZA Z TABASCO I KOLENDRĄ R-209338. This sign was applied for by the Polish company Agros Nova sp. z o.o. from Warsaw for goods in class 32 such as juices, nectars and vegetable beverages, multi-vegetable nectars and vegetable beverages with the addition of micro and/or macroelements and/or vitamins and/or substance supporting the metabolic processes and/or flavorings, spices and herbs, sports and energy drinks, products for production of beverages: extracts, essences and concentrates, seasonings, and syrups, instant drinks.

Mc Ilhenny Company filed a request for invalidation of Agros’ trade mark. Mc Ilhenny is the owner of the word trade mark TABASCO R-51500 registered with the earlier priority of 24 March 1973, in class 30 for pepper sauce.

The Adjudicative Board of the PPO in its decision of 11 May 2011 case no. Sp. 207/10 dismissed the request. The PPO ruled that there is no likelihood of confusion between both trade marks because Agros’ trade mark is a label with rich graphics, where the words “karotka” and “fortuna” are located in a central position, and the word “Tabasco” is placed below and it’s not a dominant element of the whole sign. It only appears at the bottom of the label, and is written in a small font. This decision is not final yet. A complaint can be brought to the Voivodeship Administrative Court in Warsaw.

Trade mark law, case Sp. 352/08

April 29th, 2011, Tomasz Rychlicki

Prywatne Biuro Podróży Sindbad Ryszard Wójcik from Opole, requested the Polish Patent Office to invalidate the word-figurative trade mark SINDBAD HOTELE R-172657 registered in Class 40 and 43 for services such as photographic film development and printing and accommodation and reservations, and owned by Przedsiębiorstwa Handlowo-Usługowego Sindbad s.c. Michał Ząbroń, Roman Mandyna from Kraków. Ryszard Wojcik is the holder of the word-figurative trade mark SINDBAD R-77988 registered with the earlier priority in Class 35 and 39 for services such as transporting of passengers and goods by car, organization of tourist trips, travel agencies and advertising agencies.

R-172657

The Adjudicative Board of the PPO in its decision of 18 April 2010 case no. Sp. 352/08 invalidated the right of protection. The PPO held that there exists similarity of the signs and services. As for services, the PPO said that accommodation and travel agency services are related. This decision is not final yet. A complaint can be brought to the Voivodeship Administrative Court in Warsaw.

Trade mark law, case Sp. 457/08

February 21st, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the registration of the industrial design “bottle with cap” Rp-2543 owned by Zakład Produkcj Opakowań Rosiński i S-ka sp.j. The request for invalidation was filed by Unilever, which claimed that the design infringes on its 3D trade mark R-134678. This 3D trade mark has the form of a bottle for liquids and it was registered on 20 March 2002 (with a priority of 29 January 1999) for goods in Classes 03 and 05 such as detergents, preparations and substances all for laundry use, fabric conditioning preparations, bleaching preparations, cleaning, polishing, scouring and abrasive preparations, soaps, deodorants for personal use, hand washes disinfectants, sanitary preparations, preparations for destroying vermin, insects and noxious animals, fungicides, germicides, bactericides, parasiticides, algicides, insecticides, weedkillers, deodorants, other than for personal use, air freshening preparations, insect repellents. The decision of the PPO was uphold by the Voivodeship Administrative Court. Rosiński filed a cassation complaint and the Supreme Administrative Court agreed with the Polish company and returned this case for reconsideration. The PPO will again decide on the invalidation of the industrial design in question.

Rp-2543

Meanwhile, during the battle over the industrial design, Rosiński requested the Polish Patent Office to decide on the lapse of the right of protection to 3D trade mark R-134678.

Rosinski claimed that the 3D mark in question must be treated, as the so-called weak sign. A bottle as such, is not, remarkably original shape significantly different from other packaging that are available on the Polish market for liquid toilet cleaners. Rosinski emphasized that the registered form of a trade mark significantly differs from the form that is actually used. Only the label, take than 50% of the bottle, and it is insignificant part of a packaging, that attracts attention of the buyer. Rosinski also noted that Unilever cannot argue and prove that the use of the mark in the form without additional elements is genuine use if the actually used a form of a registered trade mark (with labels) was subject to a separate registration (word-figurative trade mark Domestos SPRING FRESH THICK DISINFECTING CLEANER KILLS ALL KNOWN GERMS R-155952). Rosiński added that while the request does not seek to challenge the general idea of registrability of 3 dimensional trade marks such as the shapes of packages. However, such registration has its consequences. While, Unilever was allowed to register its bottle, and as a rule all the other manufacturers are allowed to do, these are weak signs, because such registration does not break the idea of a bottle for fluids.

R-134678

Unilever argued that Rosiński has no legal interest (locus standi) in requesting the lapse and presented a series of evidence on the genuine use of its 3D trade mark. The evidence included market research of 2009 on the knowledge of the DOMESTOS bottle shape amongst consumers, annual (1999-2000) spendings on television advertising of Domestos, black and white and color prints of television commercials, CD with TV ads recorded on it, color printings of press advertisements, series of judgments issued by French and German courts that were consistent with Unilever’s arguments.

R-155952

The Adjudicative Board of the PPO composed of five members (usually the board decides a case in a panel composed of the chairman and two members of a board, but five members’ board may be appointed for hearing complicated cases) in its decision of 20 December 2010 case file Sp. 457/08 ruled on the lapse of the right or protection because of non-use in the form in which the trade mark has been registered. The PPO agreed that Rosiński presented clear evidences on locus standi. All legal actions initiated by Unilever were directed against Rosiński’s freedom of business activity and this justified the request to the PPO to decide on the lapse. The PPO held that all submitted materials do not themselves constitute evidence of the genuine use of a bottle with a red cap without a label. Unilever did not show the place and time, extent and nature of use of its trade mark based on specific and objective evidence. The PPO noted that Unilever is the holder of other trade marks that have the same shape, especially word-figurative trade mark R-155952 and R-107207, IR-787372 and IR-798868 and according to the case-law, if there is a registered form of the trade mark with a label and it is genuinely used, then one cannot argue about the genuine use of another registered trade mark that lacks these additional elements. The PPO also ruled that evidence in the form of private public opinion research was dated on 2005 and did not constitute direct evidence of the genuine use of a green bottle with red cap but rather it tried to prove the renown of another trade mark with a label. Also, according to the case-law of the Polish Supreme Administrative Court, the reputation of a trade mark does not preclude the issuance of a decision on the lapse of this trade mark. The PPO ruled that frames from the TV ads and print ads were poor quality and were not in any way dated, It was also not proven whether the TV ads were aired in Poland. There has not also been proved that these ads were even broadcasted. As regards the print ads there were not provided titles of newspapers that the ads appeared nor numbers or dates of editions, and often other bottles of Domestos product appeared in these materials. Judgments of foreign courts that were submitted in this case are not very important considering that the law under which they were issued is not valid and binging in the Republic of Poland and each case before the PPO is examined individually based on specific facts of the particular situation. Also it was difficult for the PPO to consider these decisions to be persuasive, becasue the 3D sign must retain its individual character and it needs to designate the origin of goods and in this case Unilever had other trade marks of the same shape.

Therefore, in the opinion of the Polish Patent Office, Unilever has not produced evidence of the genuine use of the 3D trade mark R-134678 on the Polish territory during an uninterrupted period of five years after the date of the decision to grant a right of protection. This decision is not final yet. A complaint may be filed to the administrative court. HT goes to Grzegorz Pacek.