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Archive for: Polish Patent Office

Trade mark law, case II GSK 371/14

April 10th, 2015, Tomasz Rychlicki

On 5 May 2010, PLAY Brand Management Limited applied to the Polish Patent Office for the right of protection for a single color trade mark Z-369967 defined in PANTONE scale as 2627C, for goods and services in Classes 9, 35 and 38.

The Polish Patent Office refused to grant the right of protection and decided that the applied sign was not inherently distinctive in relation to communications services for mobile phones, and the applicant has not demonstrated sufficiently that the mark has acquired distinctivenes through use. PLAY submitted request for re-examination of the matter. The PPO ruled that the sign in question may serve as a trade mark, since it was applied graphically and identified using the code recognized at international level, i.e. Pantone number. Such a figurative representation of a single color is in line with the requirements set for a designation that in order to fulfill its function as a trade mark must be clear, precise, complete in itself, easily accessible, understandable, fixed and objective. However, while analyzing the distinctiveness of the applied trade mark in concreto, the PPO stressed that, according to settled case-law, the essential function of a trade mark is to guarantee to the consumer or end user the identity of the origin of the designated goods or designated services, by allwowing him to distinguish the goods or services from the goods or services of different origin. The goal of distinctiveness of a trade mark is to provide a given sign with such features that in the minds of market players they will clearly indicate that the product (or service) marked in this way is derived from the specific entity. Therefore, the attention sould be paid to the customary use of the trade mark, as a designation of origin in the specific sectors, as well as the perception of relevant consumers. In the opinion of the PPO when it comes to color per se, the existence of distinctiveness (without any prior use) is possible only in exceptional circumstances, in particular, when the number of goods or services for which the trade mark was applied for is very limited and the relevant market is very specific. Those conditions must be interpreted in the light of the public interest, which is based on the fact that the availability of colors cannot be unduly limited for all other entrepreneurs. The PPO noted that the modern technology allows to generate an almost infinite number of shades of each color, but in assessing whether they differ from each other, one should take into the perception of a relevant group, and therefore the average consumer. The number of colors that people are able to actually identify, is small, therefore the number of colors available as potential trade marks that would allow for distinguishing the goods had to be regarded as very limited. Moreover, the market for mobile services is not narrow and specific. Such market does not only cover telecom operators, but it is a collection of current and potential buyers of a product or service, respectively, its size depends on the number of buyers that express interest in all products, with an adequate income and availability of products for purchase. Market size is a characteristic that describes the quantitative state of the market at a given time in number of consumers (users) of a given type of goods or services. The PPO stated that the scale of Pantone, as the RAL or CMYK scales, is a very precise tool used to describe the color, but little practical from the standpoint of conditions of a normal trade and market turnover. The description of the Pantone color will not be a sufficient indication for the average consumer. The PPO also decided that less than four years (the company started its operation in 2007, and market survey evidence was conducted in 2011) could not be considered as a sufficient period to establish that the sign was in long-term use. In the context of proving that the sign has acquired secondary meaning, such time was certainly too short. PLAY Brand Management filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 9 October 2013 case file VI SA/Wa 1378/13 dismissed it. The Court ruled that the PPO properly examined all the evidence material and properly justified its decision. The VAC as the PPO relied on the opinion of legal commentators and the so-called “color depletion/exhaustion” theory. According to this concept, the number of colors that the human eye is able to recognize is small and limited. Therefore, none of the colors should be subject to anyone’s “ownership”, or generally speaking – the exclusive right, and these colors should be keept in the public domain, and therefore freely available for all entrepreneurs. The theory of shades’ confusion support the first one. The second provides that human perception is so limited that the average consumer is not able to distinguish between a large number of shades of different colors. Applying both theories to present commercial realities it should be borne in mind that the majority of trade marks exists in an environment where decisions on the purchase of goods or use of services are made hastily, without much hesitation on the part of consumers. It is difficult to expect that consumers will conduct an analysis and comparison of similar shades of color, and on this basis, they will be associating the product with its origin. The Court also agreed that the acquired distinctiveness has not been proven. Surveys were conducted in a group consisting of 1000 respondents who use mobile phones and thus who should have knowledge about the market and mobile network operators. However, these people differently responded to the two questions: i) with which mobile operators’ brands do they associate the color, and ii) with which brands do they associate the color.
For the first question, 59% of respondents indicated PLAY as the operator, and only 11% respondents of the same group associated the color with PLAY while answering the second question, although the results should be concurrent, because the second question has not been addressed to random group of people, but a group of people who use mobile services. PLAY Brand Management filed a cassation complaint.

The Supreme Administrative Court in its judgment of 23 March 2015 II GSK 371/14 dismissed it.

Unfair competition law, case VI ACa 1478/13

March 26th, 2015, Tomasz Rychlicki

Two Polish companies were involved in dispute regarding invalidation of a patent right. During the proceedings before the Polish Patent Office, one of the parties provided evidence that included internal documents and secret materials of the other party. The company filed a civil court action claiming unfair competition delict/tort.

The Appeallate Court in Warsaw in its judgment of 13 May 2014 case file VI ACa 1478/13 ruled that patent invalidation proceedings, like any other litigation between entrepreneurs – even if it is connected with the economic activity of such entities, cannot be regarded as performing or conducting economic/business activities. This results in a lack of responsibility of the party of the proceedings before the Patent Office in respect of an act of unfair competition, even if in the course of that proceedings such party conducted activities that would normally be deemed as acts of unfair competition.

Trade mark law, case II GSK 2803/14

March 20th, 2015, Tomasz Rychlicki

The Polish Patent Office dismissed the request to invalidate the right of protection for the word trade mark PHYTOLYZIN R-195394. The request was filed by Dr. med. Matthias Rath, the owner of the earlier International trade mark registration LyCin IR-813677. The Voivodeship Administrative Court in its judgment of 15 November 2012 case file VI SA/Wa 790/12 dismissed a complaint filed against this decision, and the Supreme Administrative Court in its judgment of 3 July 2014 case file II GSK 492/13 dismissed a cassation complaint filed by Dr. med. Matthias Rath.

On November 2014, Mr Rath filed before the Supreme Administrative Court a request for the annulment of previous proceedings, and a motion to reopen the proceedings and to issue an award of costs in accordance with prescribed procedure and also submitted as a supplement to the cassation complaint the decision of the Office for Harmonisation in the Internal Market of March 2013 on invalidity of the trade mark PHYTOLIZIN along with its certified translation into Polish. Mr Rath argued that the proceeding should be deemed by the Court as invalid because as the representative of the trademark owner appeared an attorney who submitted at the hearing a substitution of PoA as signed of July 2014. However, the power of attorney was invalid, because it was issued on behalf of another company, which was not a party to the proceedings.

The Supreme Administrative Court in its judgment of 9 January 2015 case file II GSK 2803/14 rejected the request and held that such motion is allowed if a party does not have the capacity and standing to bring proceedings or was not properly represented or if as a result of violations of the law was deprived of possible actions. However, the reopening cannot be requested if, before the judgment becomes final the inability to act ceased, the lack of proper representation was raised by way of objection, or a party has confirmed all procedural actions. These pleas and arguments for reopening, however, did not apply to Mr Rath. The argument for reopening of the proceedings was based on lack of adequate representation refered to the representation of the trade mark owner, not Mr Rath, and such a request may only be raised by a party that was not properly represented.

Trade mark law, case II GSK 2037/13

February 23rd, 2015, Tomasz Rychlicki

The Polish company FARMINA Sp. z o.o. filed before the Polish Patent Office a notice of opposition to the final decision on the grant of a right of protection for the word-figurative trade mark FARMONA Waliczek R-190461 registered for goods in Classes 3 and 5. Farmina argued that the trade mark FARMONA Waliczek is similar to its word trade mark FARMINA R-98950 also registered for goods in Classes 3 and 5. Laboratorium Kosmetyków Naturalnych FARMONA Sp. z o.o., the owner of a contested registration, argued that both signs are different, and as such there is no likelihood of confusion. FARMONA Sp. z o.o. also requested the PPO to decided on the lapse of the right of protection for the trade mark FARMINA R-98950 for goods in Class 3. In its letter of May 2010, FARMONA withdrew all previous arguments made by a former attorney in the case and has requested the PPO not to take into the account of all the evidence submitted. FARMONA argued that the goods are not similar, and from the range of over 300 prodcts, only 3 are distibuted in pharmacies, but only in those who have a cosmetic department. FARMONA argued that the parties operate in other industries. FARMONA Waliczek is engaged in the production of natural cosmetics offering a series of body care products, facial hair, as well as professional cosmetics for beauty salons and spas. FARMINA, however, claims to be a producer of drugs.

FARMINA argued that the PPO should dismiss the request to decide on the lapse of the trade mark. The Company claimed that not only it produces goods for pharmaceutical purposes, but also products for the purposes of care, which according to some people may belong to Class 5 of the Nice Classification. FARMINA stated that it uses its trade mark for the goods associated with personal care such as soaps, gels, creams, cosmetics and hair care products. The Comapny indicated that, in principle, all cosmetics contain ingredients that cause skin regeneration and it is debatable whether or not they should be considered as therapeutic agents or care products. The Opponent also argued that, due to the fact that it uses the trade mark FARMINA for goods similar or complementary to the perfumery products, such use should be considered as use of that mark for goods in Class 3 of the Nice Classification.

The Polish Patent Office noted that the right of protection for a trademark may not be invalidated on a sole ground that the trademark is similar to an earlier trademark, where the latter has not been genuinely used. This argument that the sign has not been genuinely used may only be raised when accompanied by a request for declaring the right of protection lapsed. The case should be examined jointly with the request for invalidation. The PPO decided that the trade mark FARMINA was not genuinely used for perfumery and ruled that the right of protection lapsed as of November 2002. In the opinion of the PPO, the compared trade marks had to be regarded as similar as the dominant elements in the signs are verbal elements FARMINA and FARMONA. These are words of the same length, consisting of the same number of syllables, and which contain the same beginning and ending. These words differ only in the fifth letter. The similarities are not excluded by the use of another verbal element, the word “Waliczek”, because this element is the name of the owner of the company, thus, this word refers in its content to the information that may suggest the average person, a person who organizes and operates a business or businesses, the licensee, or the founder of the company, etc. The PPO invalidated the right of protection for the trade mark FARMONA Waliczek for the following products in Class 5: antisepsis, balms for medical purposes, biological preparations for medical purposes, enzymes for pharmaceutical purposes, enzymes for medical purposes, tea with herbs, medicinal ointments for pharmaceutical use, preparations with microelements for humans and animals, tinctures for medical purposes, dietetic beverages for medicinal purposes, oils for medicinal purposes, analgesics, laxatives, vitamin supplements, extracts for medicinal purposes, medicinal herbs, candies medicinal purposes, syrups for medical use, dietetic foods for medicinal purposes, gelatin for medical purposes. Both companies filed complaints against this decision.

The Voivodeship Administrative Court in its judgment of 15 April 2013 case file VI SA/Wa 2177/12 joined the cases in one proceeding. The Court found no reason to revoke the decision of the Polish Paten Office, and dismissed both complaints. The VAC held, inter alia, that according to the established legal doctrine (opinions presented by Professor M. Kępiński in “Niebezpieczeństwo wprowadzenia w błąd odbiorców co do źródła pochodzenia towarów w prawie znaków towarowych”, published in Zeszyty Naukowe UJ 28/1982, pp. 17,18), in the short signs (words including up to 5 letters), just one letter difference should exclude the similarity. For the signs of the average length (up to 8 characters) at least 2 letters should be different to decide on dissimilarity. Again, both companies filed cassation complaints.

The Supreme Administrative Court in its judgment of II GSK 2037/13 dismissed both.

Trade mark law, case II GSK 2062/13

January 30th, 2015, Tomasz Rychlicki

Transformation and economic changes in Poland after 1990 left a lot of problems in the case of trademarks that belong to the state-owned enterprises. The case described below is one of many examples.

PPHU HERBAPOL spółka z ograniczoną odpowiedzialnością requested the Polish Patent Office to invalidate the word-figurative trade mark Herbapol Wrocław R-179901 that was registered for Wrocławskie Zakłady Zielarskie HERBAPOL Spółka Akcyjna for goods in Classes 3, 5, 30, 31 and 32. PPHU HERBAPOL argued that the questioned registration was applied for in bad faith and this sign is similar or identical to registration owned by PPHU HERBAPOL such as the word trade mark HERBAPOL R-00312 or the word-figurative trade mark HERBAPOL R-00356. PPHU HERBAPOL stressed that the goods are identical, are intended for the same consumers, on the same territory. The Company argued that according to the provisions of the Polish Industrial Property Law and regulations governing the use of Herbapol collective trade marks, the right to use this sign should be entitled only to PPHU HERBAPOL, and all affiliated entities, which also include HERBAPOL S.A., and the registration of an individual trade mark identical or similar to a collective trade mark Herbapol may only be made for the benefit of the PPHU HERBAPOL. Therefore, HERBAPOL S.A. obtained the right of protection “illegally”. It was emphasized that the right for the protection of the collective trade mark does not grant exclusivity to use the sign to one entity, because it is reserved for the organization with the right to its use by the organization and all of its affiliated entities. HERBAPOL S.A. is both a shareholder of PPHU HERBAPOL and the entity authorized to use the collective trade mark. Therefore, HERBAPOL S.A. was fully aware that its trade mark application was made without the knowledge and consent of PPHU HERBAPOL, which infringed PPHU HERBAPOL’s right of protection for the collective trade marks.

HERBAPOL S.A. requested the PPO to dismiss the case. The Company presented a genealogy of the transformation of the state owned company that was originally the sole owner of the Herbapol trade mark, and argued that PPHU HERBAPOL derives its priority to Herbapol sign “secondarily”. In this context, and bearing in mind that PPHU HERBAPOL does use the sign and not produce any goods under the name Herbapol, PPHU HERBAPOL is not the legal successor of the state enterprise. Consequently, HERBAPOL S.A. argued that PPHU HERBAPOL lacks of legal interest in seeking the invalidation of the disputed right of protection, and PPHU HERBAPOL did not object to the use of questioned sign in five years.

The Polish Patent Office invalidated the right of protection. The PPO decided inter alia that compared signs are similar in all three aspects, and the goods are identical or similar. HERBAPOL S.A. filed a complaint against this decision and argued that currently, between all companies included in PPHU HERBAPOL, there are no capital ties, on the contrary, they are in the classic competitive relationship, therefore as of the 1993/1994 they all began to use geographical designation like Wrocław, Poznań or Lublin alongside the sign Herbapol. Since then, HERBAPOL S.A. incurred large spending on advertising of its products thus the recipients of its products were able to distinguish the mark from other manufacturers that used the sign Herbapol. For these reasons, the HERBAPOL S.A. believed that its designation obtained independent and individual market position. HERBAPOL S.A. also argued that it has acquried the right to use Herbapol sign before PPHU HERBAPOL, because since 1959, it has used the word Herbapol in the company name. The state owned company Zjednoczenie Przemysłu Zielarskiego “Herbapol” in Warsaw applied for the right of protection for Herbapol trade mark in 1974, however in 1982 the company was dissolved and in its place another entity was created. Therefore, the right of protection has expired in 1984. PPHU HERBAPOL was founded in 1989 and in the same year the Company requested the Polish Patent Office to change the owner of all Herbapol trade marks in the Register kept by the PPO. From the foregoing, HERBAPOL S.A. brought the conclusion that the right to Herbapol sign should not derived by PPHU HERBAPOL from the “material priority”, but its right has kind of secondary nature.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 June 2014 case file VI SA/Wa 101/13 dimissed the complaint and ruled that because this case involved a collective trade mark, the Court had to indicate the nature of this type of sign. The main conclusion is that the right to collective trade mark belongs to the organization, but the organization’s affiliated entities are entitled to use the sign. The VAC cited recent judgment of the Supreme Administrative Court of 27 June 2007 case file II GSK 83/07 in which the SAC held that a collective trade mark serves many entities, although the right of protection is granted for a specific organization. The right to a trade and the right to use it separated. This institution should be distinguished from the joint right of protection, which is related to an individual trade mark, where such sign is intended for concurrent use by several undertakings who have jointly applied for the protection. In other words, the right of protection for a collective trademark does not grant exclusive rights to the use the sign by a single entity, but it’s owned by one organization, and it can be used by many entities associated in this organization. However, only the organization may be awarded the right, sell it, waive this right or request a change in the Register. Therefore, HERBAPOL S.A. infringed on registrations owned by PPHU HERBAPOL. With regard to the argument that PPHU HERBAPOL was not genuinely using the Herbapol collective trade mark, the Court noted that the organization may independently use the collective trade mark, however, the use of such sign only by entities affiliated also fulfills the conditions of trade mark use.

HERBAPOL S.A. filed a cassation complaint. The Supreme Administrative Court in its judgment of 9 January 2015 case file II GSK 2062/13 dismissed it.

Trade mark law, case II GSK 1096/13

December 8th, 2014, Tomasz Rychlicki

Dansk Supermarked A/S, the owner of word trade marks NETTO and word-figurate trade mark NETTO R-114747 filed to the Polish Patenet Office a notice of opposition to the final decision on the grant of a right of protection for the word-figurative trade mark NETO R-227788 that was registered for the goods in Classes 7, 11, 19, 20, 21 and services in Classes 35 and 42. The opponent pointed out that the services in Class 35 are identical to these that NETTO trade marks were registered for, and are directed to similar consumers through similar channels. Furthermore, the services in Class 35 are complementary to the goods and services from other classes. Dansk Supermarked A/S also argued that the compared trade marks are very similar. The dominant element of the sign in question is the word “NETO”, which is crucial for the perception of the character, and the figurative element is of secondary importance. The word “NETO” is entirely contained in the opposing signs, therefore the compared trade marks are “substantially similar” and that the average consumer may mistakenly associate the signs, and there is a real risk of misleading the public as to the origin of goods and services.

The owner, Polish company Galicja Tomaszek sp. z o.o., argued that the chain stores NETTO offer both food and industrial goods, and in this case, the opposing sign is used for the determination of the store itself or chain of stores. In contrast, the disputed mark is used to designate the goods.

The Polish Patent Office invalidated the right of protection. The PPO found that trade marks at issue are similar, and pointed out that all the goods in Classes 7, 11, 19, 20 and 21, are covered by the services included in class 35, and relate to the sale of these goods. Galicja Tomaszek sp. z o.o. filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 19 December 2012 case file VI SA/Wa 1808/12 dismissed it. The Court ruled that the term “providing a service” or “service” itself have no material content in the sense that the sign may be placed only on the elements used to provide a particular service, while a trade mark can be assigned to the goods, due to their material nature, and the consumer may directly related to the goods to which a sign is assigned. The similarity of the goods/services happens when the goods (services) covered by the earlier mark and the goods (services) covered by the later mark have the same purpose and method of use. Galicja Tomaszek sp. z o.o. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 18 September 2014 case file II GSK 1096/13 dismissed it.

Trade mark law, case II GSK 582/13

June 26th, 2014, Tomasz Rychlicki

On 1 February 2007, SMYK GLOBAL ASSETS GmbH filed before the Polish Patent Office an opposition against the grant of the right of protection for the word-figurative trade mark lody SMYK NORDiS R-174465 that was registered for the Polish company NORDIS Chłodnie Polskie Sp. z o.o.

R-174465

SMYK GLOBAL ASSETS, the owner of the word-figurative trade mark SMYK R-151707 registered inter alia for goods in Class 30 such as confectionery and sweets, argued that both signs are similar and may cause consumers’ confusion. The questioned registration was also an attempt to use the trade mark that was known on the market for more than twenty years, and which has won the recognition of customers thanks to significant financial and organizational expenditures. SMYK also alleged violation of the right to the company name.

R-151707

NORDIS argued that the compared signs and the goods are not similar and there is no chance for confusion of potential buyers. The Polish company had applied for this sign in May 2003, because it should serve as a continuation of the word-figurative trade marks SMYK NORDIS NORDIS R-93343 and SMYK R-93586 that both lapsed on July 2003. NORDIS had the right to use all signs with the word elements SMYK and NORDIS, because both lapsed trade marks became the bar for registrations of new similar or identical signs for other entities, for two years after the lapse.

R-93343

SMYK GLOBAL ASSETS replied that the provisions of the Polish Industrial Property Law do not afford the institution of “continuation” of trade marks, and the modified sign does not derive legal force from the earlier marks, and the owner cannot be entitled to rely on the law that no longer exists.

R-93586

In 2008, the PPO dismissed the opposition. SMYK GLOBAL ASSETS decided to file a complaint, and the Voivodeship Administrative Court in its judgment of 20 May 2009 case file VI SA/Wa 2315/08 overturned the decision, and ruled that the PPO has made an invalid interpretation of the provisions of the Polish Industrial Property Law on the similarity of signs and the goods with regard to the likelihood of confusion. The Court found that the semantic analysis lead to the logical conclusion that the concept of the term “ice cream” falls within the term of “sweets”, and hence there exist homogeneity of goods bearing compared signs due to the fact that ice cream are goods of “the same kind” as sweets. The homogeneity of goods follows from the semantic analysis of the concepts and the nature of the goods such as “ice cream” (narrower term) and “sweets” (broader term). The VAC also noted that the word element SMYK that is present in both signs, is also endowed with a similar graphics. The case went back to the PPO for further reconsideration.

On 3 August 2009, NORDIS Chłodnie Polskie Sp. z o.o. requested the Polish Patent Office to decide on the lapse of the right of protection for the word-figurative trade mark SMYK R-151707 in part for goods in Class 30, becuse SMYK GLOBAL ASSETS failed to put this sign in genuine use on the Polish territory. SMYK argued that its trade mark was present on the market among others on candies available in SMYK’s stores that are located in big malls.

On December 2009, the Polish Patent Office decided that the right of protection for the word-figurative trade mark SMYK R-151707 lapsed as of 18 December 2008 in part for goods in Class 30 such as confectionery except chocolate and chocolate products, and candy except chocolate and chocolate products. The PPO also dismissed the opposition against the grant of the right of protection for the word-figurative trade mark lody SMYK NORDiS R-174465. SMYK GLOBAL ASSETS filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 20 November 2012 case file VI SA/Wa 397/12 dismissed it. The Court ruled that there was no violation of the company name, because at the time the disputed trade mark was applied, there was no conflict of interest between both parties, because the scope of activities of the two companies was different. SMYK GLOBAL ASSETS has not shown that the registration will disrupt the function of the name of its company, NORDIS manufactures ice cream, while SMYK GLOBAL ASSETS is a producer of items for children, including toys and clothes and was never engaged in the production or sale of ice cream, moreover, the proceedings revealed that NORDIS does not use the sign in a possible colliding area. The Court agreed with the PPO that the trade mark was not applied contrary to law, public order or morality, because this provision, as it was aptly pointed by the PPO, refers to the content or form of how the applied sign is represented. Such contradiction lies in the violation of moral norms, ethics and customs adopted in business. It occurs primarily in the signs of vulgar or offensive content or form. The VAC noted that SMYK might have confused this regulation it with another institution i.e. bad faith. Legal provisions relating to signs applied in bad faith and signs which are contrary to public policy or morality that are included in the Polish Industrial Property Law are separate premises examined in the trade mark application or invalidation proceedings. The Court emphasized that the first condition is associated with the behavior of the applicant, and the second with the sign. SMYK GLOBAL ASSETS filed a cassation complaint.

The Supreme Administrative Court in its judgment of 13 May 2014 case file II GSK 582/13 dismissed it.

Trade mark law, case II GSK 1885/12

June 10th, 2014, Tomasz Rychlicki

Polskie Towarzystwo Tatrzańskie (Polish Tatra Society) requested the Polish Patent Office to invalidate the right of protection for the the word-figurative trade mark POL.TOW.TATRZAŃSKIE 1873 R-101381 owned by Zarząd Główny Polskiego Towarzystwa Turystyczno-Krajoznawczego (Polish Tourist and Sightseeing Society). PTT argued that in 1994, the PTTK unlawfully applied for the trade mark in question. It was plagiarized traditional organizational badge of the PTT and at the same time a membership badge and a badge of honor of that Society. This organizational badge with the inscription “Pol. Tow. Tatra of 1873” and the image of chamois, was established in 1922. After the II World War, the Society ceased to function, but it has been reactivated in 1981 in times of Polish People’s Republic. The badge was re-established by the decision of the Chairman of the Committee on Youth and Sports of October 1990 issued according to the provisions of the Polish Act of 21 December 1978 on badges and uniforms, as a PTT’s badge. PTTK argued that the decision was challenged before the administrative bodies and courts.

R-101381

The PPO adjourned the proceedings until the Supreme Administrative Court in its final judgment of 2008 dismissed the cassation complaint against the decision of the Minister of Economy that refused to annull the decision of the Chairman of the Committee for Youth and Physical Culture of October 1990. The PPO invalidated the right of protection. PTTK filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 5 July 2012 case file VI SA/Wa 515/12 annulled the contested decision, and ruled it unenforceable. The Court held that the legal basis for invalidation of the trade mark were the provisions of the Article 8 point 5 of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments. Under this regulation, the registration of a sign which contains the name or crest of the Polish voivodeship, city or town, a reproduction of a Polish order, badge of honor and a military badge or sign, is unacceptable. Where justified, such a sign may be registered following approval by the competent authority state or the relevant organizational unit. In the filing date for registration of the invalidated trade mark, the Polish Act of 21 December 1978 on badges and uniforms was in force. Article 2 of that Act established three types of badges: a badge of honor, an organizational badge and an occasional badge. There was no doubt for the Court that the PTT has established an organizational badge. Clearly, it was not a badge of honor, because the PTT has not preserved the procedures required for its establishment. In turn, Article 8 point 5 of the TMA introduces inadmissible registration of a sign containing a badge of honor, not organizational badges. The VAC ruled that the PPO has violated the substantive law while deciding this case. PTT filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 May 2014 case file II GSK 1885/12 dismissed it.

Trade mark law, case II GSK 244/13

May 22nd, 2014, Tomasz Rychlicki

On March 2008, the Polish Patent Office has granted to the Politechnika Wrocławska (Wrocław University of Technology) the right of protection for the word-figurative trade mark e e-Informatica R-204692, for goods and services in Classes 9, 16, 18, 25, 35, 41 and 42.

R-204692

Mr Piotr Chlebowski filed the opposition against the decision of the PPO, and argued that he works on the market (in business) under the business pseudonym Informatica, and has been using that term as a company name that was entered in the register of business activity in 2003. He also uses that name within “a website for his Internet domain”. The term Informatica is also used by Mr Chlebowski on business cards, in advertising, invoices and stamps. He argued that the questioned trade mark also violates his personal rights, because he has started the company under the name Informatica. In addition, he also enjoys the copyright to the term “Informatica”, and the use of that name by the Politechnika Wrocławska is also contrary to regulations provided in the Polish Act on Combating Unfair Competition.

Politechnika Wrocławska requested the PPO to dismiss the opposition and argued that the term Informatica cannot be deemed as personal or economic right or interest. There is no unfair competition because the name Informatica does not lead to consumers’ confusion as to the producer of goods or services.

The Polish Patent Office dismissed the opposition. The PPO ruled the Mr Chlebowski is entitled to his full company name, not only to the term Informatica, and the provisions of the Polish Civil Code raised by the opponent relate to the violation of personal interests, and therefore not personal rights. However, the the mere fact that someone applied for a trade mark consisting of a part of the name of another company is not yet an obstacle to the registration. It is required that the registration and use of the trade mark constitutes a violation of the right to the company name. The average consumer will considers the designation as descriptive for the goods and services related to information technology. However, the figurative element – the first letter “e” – plays the dominant role in the perception of the whole trade mark. The registration of a domain name informatica.pl does not create exclusive property rights that are effective against all (erga omnes – absolute rights). The right to use an Internet domain name is the “relative right” based on the contractual obligation that is effective only with respect to the domain registrar. Mr Chlebowski filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 September 2012 case file VI SA/Wa 917/12 dismissed it, and Mr Chlebowski decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 3 April 2014 case file II GSK 244/13 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that a name of enterprise (business or company) belongs to the category of personal and property rights, which are subject to legal protection, and that these rights may be infringed by the use of the trade mark, because the two signs (the company’s name and a trademark) both identify the company. The SAC noted that the VAC relied on provision of the Polish Commercial Code that for many years were no longer in force, and incorrectly stated that Mr Chlebowski, as a natural person conducting his business activities, is not entitled to the company name. While the the Polish legislature has regulated in the Civil Code in Section III titled “Entrepreneurs and their designation” the right to the company name, which is also entitled to an entrepreneur who is a natural person. Thus, in this case occurred primarily a conflict of a right to the company name and the right of protection for a trade mark. The Supreme Administrative Court stated in its previous case-law, that the name of a company (the firm) is used to identify and differentiate entities in legal and economic transactions. It also serves a carrier of certain information about the characteristics and qualities of their activities. Unauthorized interference with the functions of the company name infringes the right to the name. This infringement is not prejudiced by registration of a trade mark that is identical or similar to the name of another company. Exclusive rights to the company name (firm) are not absolute. Their limits are territorial and objective and are based on actual activity of an entity that uses a given name. Only within these limits a collisions between identical or similar company name and trademark may occur. If different fields of business activities of a person (legal or natural) that is entitled to the company name and the proprietor of a trade mark, do not lead to consumers’ confusion with regard to the identity of companies, or such proprietor of the later trade mark is not using the reputation associated with earlier (identical or similar) company name, it is difficult to talk about the collision of these two rights, and consequently an infringement of an earlier right to the company name by the later mark (see: “Trade mark law, case II GSK 31/06” and “Trade mark law, case II GSK 406/08“). Applying these considerations to the present case, the SAC ruled that the VAC should reconsider and establish such facts as from which time Mr Chlebowski had acted in the course of trade under the company, using in addition to his surname a designation Informatica, what was the scope and of that activity and whether there is a risk of consumers’ confusion as to the identity of his company and the owner of a disputed trade mark. As it was already established in the case-law of Polish administrative courts, while finding an infringement of personal or property rights of third parties by a trade mark registration, it does not matter whether there are specific facts of confusion in trade, i.e. consumers’ confusion as to the identity of the company and the sign. It is enough to determine the potential possibility (likelihood) of such confusion, that in case of companies carrying identical or convergent activities, seems inevitable (see the judgment of the Supreme Administrative Court of 30 March 2006 case file II GSK 3/06, published in electronic database LEX, under the no. 197239). While considering this case, the VAC should also pay attention to the unified position of both the Supreme Court and the Supreme Administrative Court expressed in the case law that in case of a collision between a company name and an applied and/or registered trade mark, the priority is given to the earlier right.

Trade mark law, case II GSK 146/13

May 7th, 2014, Tomasz Rychlicki

On September 2007, Mr Jarosław Spychała applied to the Polish Patent Office for the right of protection for the word trade mark LEGO-LOGOS Z-330692 for services in Classes 35, 36 and 41. The PPO informed the applicant that his trade mark is similar to series of signs registered and owned by LEGO Juris A/S. Mr Spychała argued that the applied sign is the neologism derived from the ancient Greek language, and the term LEGO simply means “to read, think or speak”, and the term LOGOS means “learning” in a broad sense. In academic and education circles the term LEGO-LOGOS is associated with a particular form of education in philosophy and in building moral attitudes. The mark is directed at people who wish to explore philosophy and knowledge.

The Polish Patent Office refused to grant the right of protection because the applied trade mark was similar to the word trade mark LEGO R-72961 that was registered with an earlier priority for almost similar services. Mr Spychała filed a complaint against this decision and argued that the fact that compared signs share the same identical word element is not sufficient to refuse the protection for the later trade mark. The most important was the subject of the applied trade mark – a philosophical concept developed by the applicant and its popularization.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 1201/11 dismissed the complaint. The Court noted that the PPO properly made the comparison of goods and services and did not erred in comparison of both signs. The VAC agreed with the PPO that the word element LEGO can also mean to fold or to assemble, and thus relate to specific products – blocks that are marked by registered trademarks of LEGO Juris A/S. The Court pointed out that the applicant while describing the project of philosophical education under the name LEGO-LOGOS has also showed that he drew the expression of LEGO from Danish language. Regardless of what language (Ancient Greek or Danish) the dominant element LEGO was taken, it is a word that does not exist in the Polish language. Its importance in ancient Greek or Danish is not understandable for the average Polish recipient of goods or services. It may be related to the characteristics of goods – just blocks marked with this sign. Mr Spychała filed a cassation complaint.

The Supreme Administrative Court in its judgment of 11 March 2014 case file II GSK 146/13 dismissed it.

Trade mark law, case II GSK 2005/12

April 8th, 2014, Tomasz Rychlicki

The Polish Patent Office dismissed the opposition filed by E.I. du Pont de Nemours & Company against the decision on the grant of the right of protection for the word trade mark TEFAPAK R-199130 that was applied for the Polish company SINOGRAF S.A.

E.I. du Pont argued that the sign TEFAPAK is similar to its trade mark TEFLON R-49573 that was registered in Poland in 1968, and to its CTM TEFLON that was registered in 1996. According to the US company, the compared goods are identical or similar, and the signs share the same prefix TEF, which could lead to consumers’ confusion.

SINOGRAF S.A. requested the PPO to dismiss the opposition, and argued that the goods are directed to competent consumers of the proper level of technical knowledge, who have knowledge and experience in the field of materials, and thus much greater possibility of distinguishing different trade marks than the average recipient.

The PPO dismissed the opposition and found that the trade marks at issue are not similar, since they have significantly different overall impression both in the the visual and aural aspects. The PPO noted that there is no likelihood of confusion and it could not include the likelihood of association, because the goods are targeted to specialized recipients. E.I. du Pont filed a compliant against this decision.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 301/12 dismissed it. The Court held that the Polish Patent Office correctly established all circumstances of the case. The VAC agreed that the goods are identical or similar, however, the Court did not agree with the argument that the compared signs are similar to the extent that could lead to likelihood of confusion. In the opinion of the Court, the trade mark are not similar, so arguments about the use of someone else’s reputation and the reputation of the trade mark can not be justified. Dissimilar signs can not induce associations of customers, so there can be no conscious imitation and benefit from someone else’s reputation. E.I. du Pont filed a cassation complaint.

The Supreme Adminitrative Court in its judgment of 20 March 2014 case file II GSK 2005/12 dismissed it.

Trade mark law, case II GSK 1542/12

February 17th, 2014, Tomasz Rychlicki

On August 2008, The Polish Patent Office granted the right of protection for the word-figurative trade mark TEFLEX Q R-211213 for goods in Class 9 such as optical apparatus and instruments, spectacle frames, sunglasses, eyeglasses, articles for the manufacture of spectacles, spectacle cases, chains for spectacles, sports eyeglasses, optical lenses, optical glasses, optical products, and services in Class 44 such as optical services, medical assistance, medical clinics, for the Polish company Krasnodębski i S-ka OPTIBLOK Spółka Jawna.

R-211213

Eschenbach Optik GmbH filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. The German company argued that the trade mark TEFLEX Q is similar to its CTM t-flex no. 001821651 that was registered for goods in Class 9 such as spectacles and spectacle frames. Moreover, it pointed out that the questioned trade mark has been applied for registration in bad faith, and its registration and use may lead to the infringement of the applicant’s property rights and the unfounded use of the reputation of the t-flex designation. The fact that the registered sign is confusingly similar and resembles t-flex brand for the same narrow class of products was an argument for the bad faith. Such action indicated the intention to use consumers’ knowledge of products bearing t-flex sign. The brand t-flex is a fanciful designation and it was extremely unlikely for the OPTIBLOK to apply for registration of the sign that was very similar. It was merely a coincidence. The German company noted that it conducts its business in more than 80 countries, including Poland. From the beginning, the Company manufactured and sold of glasses and optical devices, and TITANflex technology is one of the most important of its products. The Polish company is a competitor on the local market. The registration and use of the trade mark TEFLEX Q infringes the Community trade mark t-flex and violates the property rights of Eschenbach Optik GmbH. The existence of similar signs can result in negative consequences for clients and lead them to confusion with regard to the origin of goods. The infringement of the reputation of the t-flex sign was based on its dilution. While referring to the similarity of the goods, the German company noted that the services of class 44 are complementary to the goods in Class 9.

CTM no. 001821651

The Polish company argued that it did not act in bad faith, because before filing the trade mark application, it used services of a patent and trade mark attorney and therefore acted negligently. At the time of registration there was no identical or similar signs to TEFLEX Q mark. Additionally, the brand t-flex does not have distinctive character, because there are tens of thousands of products with the same name in the world.

The Polish Patent Office invalidated the right of protection for the trade mark TEFLEX Q R- 211213 because, it found that the characters are very similar. However, PPO did not agree with the argument that the application was made in bad faith. According to settled case-law and legal commentators, the mere fact that one party applies for a trade mark similar to a sign used by the other party is not deemed as acting in bad faith. The bad faith must be proved based on other factors than knowledge of market presence of similar brands and signs, such factors include for instance dishonesty in relation to the interests of another entrepreneur. The reputation of the trade mark t-flex was also not proved. The mere statement that the German company had its Polish subsidiary was not sufficient to prove that Eschenbach Optik GmbH was present on the Polish market before the questioned trade mark was applied.

The Voivodeship Administrative Court in its judgment of 17 February 2012 case file VI SA/Wa 1885/11 dismissed it and ruled that the PPO referred precisely and in detail to all facts and evidence of the case. OPTIBLOK filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 January 2014 case file II GSK 1542/12 dismissed it.

Trade mark law, case II GSK 1500/12

January 31st, 2014, Tomasz Rychlicki

The German company Aldi Einkauf GmbH & Co. oHG filed before the Polish Patent Office a request to decide on the lapse of the right of protection for the word trade mark ELDENA R-111776 registered for Piotr Maciejec and Robert Hrebowicz for goods in Class 3 such as cosmetics, soaps, perfumery, deodorants, bath lotions. Aldi Einkauf interpreted its legal interest from the provisions of the Polish Constitution and the Polish Act on Freedom of Economic Activity (in Polish: ustawa o swobodzie dzialalnosci gospodarczej), and argued that the owners did not genuinely used their trade mark for 5 years. As the owner of the word CTM ELDENA No. 003430188, Aldi also noted that the owners of the Polish registration opposed the use of Aldi’s sign in Poland. Mr Maciejewiec and Hrebowicz questioned the legal interest of the applicant claiming that the Aldi has not registered its business in Poland. The company Aldi sp. z o.o. from Chorzów was established and registered in the National Court Register (register of entrepreneurs) on January 2006, and the first stores were opened on 25 February 2008. Therefore, assuming that the company Aldi sp. z o.o. is kind of a representative of the applicant on the Polish territory, the beginning date to establish legal interest of Aldi Einkauf should be the start date of sale of the applicant’s products, as it happened on 25 February 2008. Mr Maciejewiec and Mr Hrebowicz deemed Aldi’s request as premature due to the fact that in the period from 14 January 2005 to 25 February 2008, the disputed right of protection did not restrict the applicant’s activities in Poland, and they decided not to discuss with the arguments on the lack of genuine use, nor to provide any evidence in this matter. Aldi Einkauf argued that it received a cease and desist letter from the owners of the questioned trade mark, and provided evidence that the Polish company Aldi sp. z o.o. is a licensee of the CTM ELDENA.

The Polish Patent Office decided on the lapse of the right of protection. The PPO ruled that Aldi Einkauf proved its legal interest to request for the lapse of the right of protection for the mark at issue, because this sign was a restriction on conduct of Aldis’s business, in which the Company intended to use the designation ELDENA. Aldi submitted the advertising prospect of Aldi’s stores in Poland from 2008, with the photos of a lotion and soaps marked with ELDENA sign, as the evidence of an intention to use the CTM No. 003430188 on the Polish market. The PPO ruled that Mr Maciejewiec and Mr Hrebowicz did not provide any evidence on genuine use of their trade mark. They decided to file a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 April 2012 case file VI SA/Wa 201/12 dismissed it. The Court ruled that the “collision” of two trade mark rights was sufficient to establish the existence of a legal interest to file a request for the lapse of the right of protection. In its essence, the legal interest (locus standi) lies in overlapping of legal spheres of two or more entities, in such a way that the right held by one entity interferes with the full enjoyment of the rights held by another entity.

The Supreme Administrative Court in its judgment of 8 January 2014 case file II GSK 1500/12 dismissed the cassation complaint filed by Mr Maciejewiec and Mr Hrebowicz.

Trade mark law, case II GSK 1539/11

October 28th, 2013, Tomasz Rychlicki

On January 2007, the Polish Patent Office granted the right of protection for the word-figurative trade mark JAVART R-184566, applied for JAVART Spółka z o.o. form Warsaw, for goods in Class 1 services in Class 35 and 42.

R-184566

Oracle America, Inc., the owner of the trade marks JAVASCRIPT R-110075, JAVA COMPATIBILE R-112620, JAVA DEVELOPER CONFERENCE R-116591, 100% PURE JAVA R-125493, intended to designate goods such as computer software, electronic equipment and/or services related to these goods, filed an opposition. Oracle argued that opposed trade marks are similar and used to designate identical or similar goods and services, which may lead to consumer confusion. JAVART argued that the opposition should be dismissed. The PPO invalidated the right of protection for the word-figurative trade mark JAVART R-184566 and decided that JAVA trade marks are known by a significant part of computer users, including developers around the world, also in Poland, and as such enjoy a worldwide reputation for software.

R-125493

JAVART filed a complaint against this decision, but the Voivodeship Administrative Court in Warsaw in its judgment of 20 January 2011 case file VI SA/Wa 111/10 dismissed it. JAVART decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 23 November 2012 case file II GSK 1539/11 dismissed it. The Court held that the PPO correctly found that the applicant may gain unfair advantage through the use of the sign JAVART.

Trade mark law, case II GSK 730/12

September 17th, 2013, 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.

The Supreme Administrative Court in its judgment of 3 September 2013 case file II GSK 730/12 dismissed the cassation complaint filed by ZINO DAVIDOFF SA.

Trade mark law, case II GSK 912/12

September 13th, 2013, Tomasz Rychlicki

Zino Davidoff SA filed a notice of opposition to the decision of the Polish Patent Office on the grant of the right of protection for the word trade mark SILVER SHOW R-199238 applied for by Firma Handlowa A&S PARFUME FACTORY Marek Asenkowicz and registered for goods in Class 3 such as perfumery. Zino Davidoff SA argued that the trade mark in question is similar to its series of International registrations such as SILVER-SHADOW IR-0660174, SILVER SHADOW IR-0853401 and SILVER SHADOW IR-0879527. The compared signs are similar in verbal, aural and semantic aspects.

The PPO found that the compared signs are used to designate the goods of the same type, i.e. perfumes and various cosmetics, however the similarity of goods was not disputed by the parties. The PPO decided that there are no similarities between trade marks that would justify the risk of misleading the public as to the origin of goods. The PPO ruled that a leaflet called “alternative scents” and the fact that perfume packaging produced by A&S PARFUME FACTORY were alike to the other well-known brands, were not sufficient evidence to decide on bad faith application. Zino Davidoff SA filed a complaint against this decision. The Company noted inter alia that the PPO wrongly justified its decision by citing a different trade mark owned by Firma Handlowa A&S PARFUME FACTORY Marek Asenkowicz.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 January 2012 case file VI SA/Wa 1850/11 dismissed the complaint. The VAC fully agreed with the PPO’s findings. The Court acknowledged that the questioned decision included mistakes with regard to trade marks and their registration numbers which could point to automatic preparation of the decision’s text, however, such errors had no significant impact on the outcome of the case. Zino Davidoff SA filed a cassation complaint.

The Supreme Administrative Court in its judgment of 3 September 2013 case file II GSK 912/12 dismissed it.

Trade mark law, case II GSK 484/12

July 14th, 2013, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for word trade mark Orlen R-192731 owned by the company ORLEN Spółka z o.o. that was registered for goods in Class 9 and services in Class 42 with the priority of 2002. The request was filed by the big Polish oil company PKN ORLEN S.A. which argued that the questioned sign is similar to its reputed trade mark ORLEN R-125559 that was registered with the priority of 1999. Orlen sp. z o.o. claimed that its company had been registered and has been operating since 1992 under the name “Orlen”, and Orlen S.A. adopted and appropriated that name in 2000. Orlen S.A. called Orlen sp. z o.o. to discontinue use of that name due to getting the right of protection for the earlier trade mark ORLEN. After an exchange of correspondence between the parties, there was no consensus due to divergent expectations, in particular with regard to financial issues. Orlen S.A. proved that there were contacts and negotiations between the parties, subject to the cease of use of the mark ORLEN and argued that the trade mark application was mercantile in nature, becasue the applicant seek only commercial interest and wanted to sell this trade mark. Orlen S.A. submitted copies of correspondence between the parties and photocopies of sale offers. ORLEN Spółka z o.o. filed a complaint against this decision and pointed out that it has offered to sell the company as a whole rather than the trade mark itself.

R-167806

The Voivodeship Administrative Court in its judgment of 24 October 2011 case file VI SA/Wa 1376/11 dismissed the complaint and ruled that an entrepreneur performing its business activities must be guided by the degree of care that is expected from more than the average person in order to predict the consequences of his or her actions and omissions. The content of the right to the company name within the meaning of the Polish Civil Code is not in fact an absolute and unrestricted right that allows to apply on its behalf for a trade mark that is convergent with this company name, regardless of the rights of third parties. Therefore, the person who uses a given sign and does not register it on his or her own behalf as a trade mark, acts at own risk. An entrepreneur who does not seek to acquire protection for its trade mark cannot rely on the earlier right to its company name, when the other party has obtained a right to a sign identical to the name of the business with an earlier priority and through significant investments earned its reputation. In such a situation, an identical trade mark application made by the entrepreneur who has the right to the company after many years from the commencement of his business, when the other party has made a substantial investment and broad actions leading to the reputation of its trade mark, should be regarded as taking unfair advantage of the reputation of the earlier sign.

The Supreme Administrative Court in its judgment of 26 June 2013 case file II GSK 484/12 dismissed the cassation complaint.

Trade mark law, case II GSK 487/12

June 27th, 2013, Tomasz Rychlicki

On May 2006, the Polish Patent Office granted the joint right of protection for the word-figurative trade mark SILMENT R-175055 for three Polish entrepreneurs – Stanisław Wilk, Jan Kosmala and Marek Siemiński. Mr Wilk requested the PPO for a change in the trade mark register. According to the donation agreement of January 2010, he has transferred to his son 1.65% of 33% of his share in the right to the trade mark. On June 2010, the PPO entered the name of his son and deleted Stanisław Wilk, however, after the request for re-examination, the PPO made another changes in the column A of the trade mark register, and entered both father and son as co-owners. Mr Kosmala filed a comaplaint against this decision. He argued that the supplied evidence did not allow for making such amendments. Mr Kosmala did not agree that a part of 33% share could be transferred to another person, because according the agreement of 2004 on the joint ownership, that was signed between Kosmala, Siemiński and Wilk senior, any joint owner could make a donation of the joint right to the right of protection for a trade mark SILMENT R-175055 only to the spouse and descendants of the first group of inheritance.

R-175055

The Voivideship Administrative Court in Warsaw in its judgment of 25 October 2011 case file VI SA/Wa 1409/11 noted that between co-owners to the trade mark SILMENT arose a dispute over the interpretation of the agreement. The Court ruled that, in principle, the right of protection for a trademark may be assigned or be subject to succession. The transfer of the right of protection may be effected only with the consent of the parties who enjoy that right. The agreement of assignment of a share in the joint right of protection should be only valid subject to the consent given by all of the joint owners. When examining the request for the change in the trade mark register, the PPO should investigate whether the submitted documents, supposed to provide grounds for taking a decision on entry in a register, are in accordance with this Polish Industrial Property Law and satisfy the effective provisions as to form. The entries should not be binding on an authority whose responsibilities, under the provisions of law, include deciding on a document founding the decision on entry in a register or in a case, the outcome of which may affect a decision of the Polish Patent Office on entry in the register. The “registry-entry” proceedings are designed to adjust the content of an entry with the current legal status, and a decision on the entry into the trade mark register has only a declaratory nature and it not a source of trade mark rights. Therefore, the cognition of the Polish Patent Office in matters of entries in the registry, is strictly defined. This means that while investigating the request for a change, the PPO cannot exceed those limits. As a result, the PPO cannot investigate the regularity of both the preparation of the documents submitted as a basis for entry in the registry, as well as make their interpretation. As there is dispute between the parties over the interpretation of the agreement, the PPO cannot agree to the interpretation of one of the parties. These doubts have to be resolved by a civil court. And if such dispute has not been initiated by a party, the PPO should stay proceedings and call the party to apply to the competent court, within the prescribed time, to provide a preliminary decision on the issue which is a condition of the settlement in the main case. Therefore,the Court annulled the contested decision, ruled it unenforceable, and ordered the PPO to consider the Court’s arguments during re-examination of the case.

The Supreme Administrative Court in its judgment of 20 June 2013 case file II GSK 487/12 dismissed the cassation complaint. The SAC held that the controversy concerning the effects of the donation agreement in the light of the content of the co-ownership of a trade mark rights, has to be resolved by a proper civil court.

Trade mark law, case VI SA/Wa 2349/12

June 21st, 2013, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw case file VI SA/Wa 2349/12 dismissed the complaint filed by the International Olympic Committee (IOC) against the decision of the Polish Patent Office that refused to invalidate the word-figurative trade mark Olimpiada Przedsiębiorczości R-220562 owned by Fundacja Promocji i Akredytacji Kierunków Ekonomicznych, and ruled that this sign not similar to the Olympics, Olympic and Olimpiad trade marks.

R-220562

The Court agreed with the PPO that sounding of the sign in question is sufficiently differentiated primarily due to the fact that the mark is composed of two words.

Trade mark law, case VI SA/Wa 1340/12

April 4th, 2013, Tomasz Rychlicki

TERRAVITA Sp. z o.o. from Poznan requested the Polish Patent Office to invalidate the international registration of 3D trade mark IR-882978 registered for Chocoladefabriken Lindt & Sprüngli AG for goods in Class 30 such as chocolate and chocolate products. TERRAVITA argued that the international registration is a bar for a Polish company to introduce different chocolate products in a shape of a haze or bunny on the national market.

IR-0882978

The Polish Patent Office in its decision of 15 April 2011 case no. Sp. 314/09 dismissed the request. The PPO ruled that TERRAVITA did not prove that the 3D trade mark lacks distinctive character, and there was no bad faith in the trade mark application, because the Polish company did not provide any evidence that Chocoladefabriken Lindt & Sprüngli seek for the protection in order to forcing royalties and block market access. TERRAVITA filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 December 2012 case file VI SA/Wa 1340/12 repealed the decision of the Polish Patent Office and ruled it should not be enforceable.

Trade mark law, case no. Sp. 407/12

February 12th, 2013, Tomasz Rychlicki

Bayerischer Brauerbund e.V. from Germany requested the Polish Patent Office to invalidate the right of protection for the international word-figurative trade mark BAVARIA IR-1051133 registered goods in Class 32 such as beer and non-alcoholic beverages for the Bavaria N.V. from the Netherlands.

IR-1051133

Bayerischer Brauerbund e.V. claimed infringement of the right to a geographical indication, and noted that the questioned trade mark is misleading, and it was applied in bad faith.

However, the PPO has not had the opportunity to comment substantively on the matter, because during the hearings, Bavaria N.V. waived its right. In these circumstances, the Adjudicative Board of the PPO in its decison of 22 January 2013 case no. Sp. 407/12 discontinued the proceedings as irrelevant.

Trade mark law, case Sp. 472/05

December 17th, 2012, Tomasz Rychlicki

Michael Ovadenko requested the Polish Patent Office to invalidate the right of protection for the word trade mark COFFEE HEAVEN R-147034 owned by Coffeeheaven International Plc. Mr Ovadenko argued that this registration infringed his copyrights.

The PPO decided to stay proceedings and ordered the applicant to come up with a petition to the civil court to determine the existence of his rights. Mr Ovadenko filed a suit before the District Court in Warsaw but it was dismissed. The Court held that the designation COFFEE HEAVEN cannot be deemed as a copyrighted work under the Polish Act on Authors Rights and Neighbouring Rights, according to which the object of copyright should be any manifestation of creative activity of individual nature, established in any form, irrespective of its value, purpose or form of expression (work). The appeal complaint was also dismissed.

The Adjudicative Board of the Polish Patent Office in its decision of 29 November 2012 case no. Sp. 472/05 dismissed the request. The decision is not final yet. The complaint may be filed before the Voivodeship Administrative Court in Warsaw.

Trade mark law, case Sp. 500/10

December 10th, 2012, Tomasz Rychlicki

Bakoma sp. z o.o. from Warsaw requested the Polish Patent Office to invalidate in part in Classes 29 and 30 the right of protection for the 3D trade mark IR-700040 owned by Compagnie Gervais Danone. Some time ago, Danone sued Bakoma for the trade mark infringement, arguing that Bakoma has used similar product packaging for its line of Frutica yoghurts. Bakoma claimed that the sign in question lacks distinctiveness and it was applied in bad faith, because Danone did not intent to use this trade mark in form it was applied for. Bakoma pointed that Danone also owned registered design for a similar packaging, and the registration of trade mark was intended to extend the protection provided for a design, and it could indicate that Danone wanted to bypass the law.

IR-0700040

Danone argued that Bakoma does not distinguish between the concept of functionality and the technical features that may give the impression that the functionality is a prerequisite to prohibit registration. Patent attorneys representing Danone cited judgments of the CJUE and noted that only forms which are simply based on technical solution are not subject to the trade mark registration, and the sign in question clearly lacks of such solutions. Danone claimed that the package has not technical features because the container does not provide a transfer of filling (from a smaller to a larger compartment), it does not prevent from shedding, and it’s not a compact package. In addition, Danone argued that Bakoma failed to prove that at the time of the trade application on the Polish market, there were similar packaging that would prevent registration of an industrial design (formerly called ornamental designs), which means that the design was new. Danone emphasized that the mark at issue can not be used on to market alone, without any label. The French company also provided evidence that the trade mark is recognized by the consumers. At the time of trade mark application, the sign was present on the market for almost 14 years and it has acquired the secondary meaning. Its use was confirmed in advertisements and price lists.

Bakoma argued that the technical solution solves a problem. In this case, as a result, how to mix one component with another, and how to serve it mixed – a solution to this problem is to move the component. These functional features are technical. Such example was even displayed in the commercial movie during the hearing. Bakoma stated that the 3D sign was not distinctive at the date of application, nor it has acquired the secondary meaning, because a 3D form can be a trademark when the average recipient will associate it with the origin of the goods. 3D form can attract the attention of consumers in terms of aesthetics, but it does not mean that it functions as a trade mark. There is no doubt that goods may be aesthetic, may encourage the purchase, but do not work as a sign. In addition, the sign could not acquire secondary meaning because it is used as a technical function, utility function. Bakoma argued that Danone seeks for the right of protection for a sign that was not intended to be used in the applied form. Even, while deciding trademark infringement case, the Appeallate Court ruled that Danone uses in the course of trade a combined mark. Bakoma argued that through the registration of the trade mark Danone wanted to obtain a monopoly on technical solutions with the use of the institution of the right of protection for a trade mark. It is a clear example of bad faith.

On 19 November 2012, the Adjudicative Board of the Polish Patent Office held its hearing, case no. Sp. 500/10. Danone’s representative has requested the PPO to postpone the hearing to allow him to get acquaint with the pleading filed by Bakoma. The PPO acceded, and set a two-week deadline. The PPO obliged both parties to complete all claims in a period of two months, under pain of losing the chance to raise them at a later date. Bakoma also requested the Polish Patent Office to decide on the lapse of the protection for the 3D trade mark IR-700040, however the PPO did not schedule the hearing in this case, no. Sp. 513/08.

Trade mark law, case Sp. 566/09

December 6th, 2012, Tomasz Rychlicki

On 11 January 2008, the Polish Patent Office granted the right of protection for the word-figurative trade mark SEYDAK R-199882 for goods in Class 4 such as fuel, lubricants, engine and gear oils and hydraulic oils, and services in Class 39 such as parking services, and in Class 43 such as hotel services: motels and restaurants. This sign was applied for by the Polish entrepreneur Przedsiębiorstwo Usługowo Handlowe Marian Seydak.

R-115854

BP p.l.c. filed a request for the invalidation of the SEYDAK trade mark. The British company argued that the questioned sign uses a composition of colors (green and yellow) that are presented in the reputed trade marks owned by BP. The Company referred to the judgment of the Court of Justice of the EU of 3 September 2009 case C-498/07 and the judgment of the Supreme Administrative Court of 20 February 2007 case file II GSK 247/06, judgment of the Supreme Administrative Court of 12 October 2010 case file II GSK 849/09, and the judgment of the Supreme Court of 23 October 2008 case file V CK 109/08. See “Trade mark law, case II GSK 247/06“, “Trade mark law, case II GSK 849/09” and “Trade mark law, case V CSK 109/08“. BP claimed that it is not possible to assume that in the case of word-figurative trade mark, the verbal elements always dominate. The above cited judgments have changed this principle, and provided that sometimes colors or images are the dominant elements that may raise associations between compared trade marks. A patent attorney who was representing Marian Seydak, pointed to the discrepancy of the case-law, and stressed that the mere similarity of background is not significant enough when compared to the visual aspect of both signs. Marian Seydak argued that the trade mark at issue is different in terms of visual aspect, colors, and the layout of letters. He also provided that he is a local entrepreneur, who has just five gas stations distant from the main routes.

R-199882

The Adjudicative Board of the PPO in its decision of 12 November 2012 case no. Sp. 566/09 dismissed the request. The decision is not final yet. The complaint may be filed before the Voivodeship Administrative Court in Warsaw.

Trade mark law, case VI SA/Wa 122/12

November 27th, 2012, Tomasz Rychlicki

On 2004, JOOP! GmbH requested the Polish Patent Office to invalidate the right of protection for the word trade mark JUUPI ! R-103654 registered for goods in Class 3 and owned by “AQUAREL” Kosiorek Spółka Jawna. The German company argued that JUUPI ! is similar to its trade marks JOOP! R-64463 and JOOP! IR-73926 that were registered with the earlier priority. The PPO in its decision of 7 February 2006 no Sp. 323/04 dismissed the request. Joop! filed a complaint against this decision, but the Voivodeship Administrative Court in its judgment of 13 October 2006 case file VI SA/Wa 1339/06 dismissed it. Joop! decided to file a cassation complaint. The Supreme Administrative Court in its judgment of 5 July 2007 case file II GSK 98/07 overturned the judgment of the VAC and sent it back for further reconsideration. The SAC held that the PPO and the VAC misinterpreted the provisions of the Polish Industrial Property Law with regard to the knowledge and awareness of the requesting party on the use of the later trade mark for a period of five successive years. The Voivodeship Administrative Court in Warsaw in its judgment of 12 October 2007 case file VI SA/Wa 1403/07 re-examined the case in accordance with what has been determined by the Supreme Administrative Court. The case went back to the PPO. Meanwhile, JOOP! GmbH transferred the rights to JOOP! R-64463 and JOOP! IR-73926 to COTY B.V. COTY appointed its representative (advocate), who submitted to the case file properly paid power of attorney that authorized him to act in this particular case, together with a copy of the relevant register of companies, however it was not recorded in the minutes and documents offered have not been adopted in the case file, which also has not been recorded in the minutes of the hearing, because the Polish Patent Office did not consider these requests and documents as coming from the party of the proceedings. The PPO dismissed the request, and decided that opposed trade marks are not similar, and the reputation of JOOP! R-64463 has not been proven. COTY filed a complaint against this decision.

The Voivodeship Admiistrative Court in Warsaw in its judgment of 2 August 2012 case file VI SA/Wa 122/12 dismissed it and ruled that the existence of legitimacy to file a complaint is subject to examination by the administrative court. This is the basic step, the result of which depends on the further course of the proceedings. The finding by the court that the complaint to the administrative court was brought by a party without legitimacy to file such a complaint, resulting in dismissal of the complaint without examining the merits of the contested decision. The Court held that the transfer (assignment) of trade mark rights in the course of proceedings before the Court for invalidation of the right of protection for a trade mark, i.e. rights to a trade mark that was used as an opposing sign, does not create the right for the new owner to seek legal interest (locus standi) in this proceedings as a party to the proceedings.

Trade mark law, case VI SA/Wa 1716/11

November 15th, 2012, Tomasz Rychlicki

On 4 January 2011, the Polish Patent Office invalidated the right of protection for the word-figurative trade mark PIEKARNIA CUKIERNIA Jacek Gaj R-175774. The request for invalidation was filed by the Polish company who owned similar earlier trade mark registration. The PPO cited findings included in the judgment of the Court of Justice of 6 October 2005 case C-120/04 and in the judgment of the Supreme Administrative court of 26 October 2006 case file II GSK 37/06, and agreed with the Courts that by adding to the complex trade mark of the word element, indicating the company from which the goods originate, such method does not remove the risk of misleading the public, since the perception of the mark as a whole may lead to the impression that the goods or services of compared signs come from companies that are economically linked. Jacek Gaj filed a complaint against this decision.

R-175774

The Voivodeship Administrative Court in its judgment of 20 February 2012 case file VI SA/Wa 1716/11 dismissed it. The Court ruled that general perception of trade marks by a potential customer – the consumer, is crucial for assessing the similarity. Verbal elements are generally dominant in the complex signs, but not when they are purely informative, descriptive, including word elements with the name of the other business.

Trade mark law, case Sp. 484/10

November 9th, 2012, Tomasz Rychlicki

Nike International Ltd., filed a notice of opposition to the decision of the Polish Patent Office on the grant of the right of protection for the figurative trade mark R-215109 that was registered for Sinda Poland Corporation sp. z o. o. for goods in Class 25 such as shoes. Nike claimed similarity of its signs and the unfair use of reputation.

R-215109

The Adjudicative Board of the Polish Patent Office in its decision of 26 October 2012 case no. Sp. 484/10 dismissed the opposition. The PPO did not find similarity between the opposed trade marks, and ruled that the disputed signs brings to mind an arrowhead. The decision is not final yet.

Trade mark law, case VI SA/Wa 769/12

November 5th, 2012, Tomasz Rychlicki

Red Bull GmbH requested the Polish Patent Office to decide on the lapse of the word-figurative trade mark TAURUS IR-604762 owned by Gablitzer Getrankeindustrie und Kaffeehandelsgesellschaft M.B.H. from Austria, and effectively registered on the Polish territory since 27 July 1993. Red Bull claimed that Gablitzer Getrankeindustrie und Kaffeehandelsgesellschaft was deleted from the registry of entrepreneurs in June 2001, and attached, as evidence, an excerpt from the register, which showed that the trade mark proprietor after the bankruptcy has been removed from the register of companies. Red Bull provided also a certified translation of the document.

IR-604762

The Adjudicative Board of the Polish Patent Office in its decision of 14 December 2011 case no. Sp. 286/10 ruled on the lapse of the right of protection as on 13 September 2007. Red Bull requested the PPO to correct an obvious mistake in the date of the lapse. The Company noted that the PPO made that mistake, because there was an error in translation into Polish of the extract from the Austrian register. Red Bull attached corrected translation from the German language, explaining the reasons for the correction. The PPO in its order of January 2012 ruled that the mistake was no committed by PPO, but by the translator. Thus, it was not subject to correction. Red Bull filed complaint against the decision.

The Voivodeship Administrative Court in its judgment of 5 September 2012 case file VI SA/Wa 769/12 annulled the contested decision, and ruled it unenforceable. The VAC noted that the public authority is obliged to carry on the proceedings in the Polish language, both in oral actions and in order to keep the documentation of the procedure in Polish, and it’s a legal obligation to use in administrative proceedings translated documents. However, the Court held that the public authority, acting on the request of a party, cannot decline to investigate the content of the document along with its translation, as the results of this examination should be unambiguous, and failure to do so, constitutes a breach of the rules of administrative proceedings that may have a significant impact on the outcome of the case. The case-law of administrative courts generally accepted the rule that – regardless of the requirements of Article 5 of the Act on the Polish language – the evidence is the content of the document created in foreign language, not its translation. Translation does not a substitute a document written in a foreign language, but serves only to determine what is the content of that document.

Trade mark law, case II GSK 1563/11

October 30th, 2012, Tomasz Rychlicki

The Voivodeshipp Administrative Court in Warsaw its judgment of 21 December 2010 case file VI SA/Wa 1579/10 dismissed the complaint filed by the Polish company Dimyat Polska Sp. z o.o. against the decisions of the Polish Patent Office on the refusal to grant the right of protection for the word trade mark PLISKA Z-135975 applied for the goods in Class 33 such as alcoholic beverages, wines, liqueurs, cognac, brandy, vodka, spirits. The PPO decided that the applied trade mark is devoid of sufficient distinctive character, because it does not individualise the goods on the market. The sign Pliska has no distinctive graphics, does not have any distinguishing features that would help to identify the manufacturer of the goods. Pliska is the name of the village in Bulgaria, in the Shumen district. It is not a fancy designation, but a sign informing about the geographical origin. The first figurative trade mark Pliska has been applied in the Republic of Poland in 1962 by the Bulgarian company. Since then alcohol products bearing Pliska trade mark have been introduced on different markets, among others, the Polish one. In addition, the PPO noted that the mark applied sign may contain inaccurate information, as it may cause confusion of the average consumer as to the origin of goods. The recipient who are buying alcoholic beverages bearing Pliska sign would believe that they were produced in Bulgaria. The Court agreed with the PPO and supported its view with the arguments included in the judgment of the Court of Justice of the EU of 4 May 1999 in joined cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions.

Dimyat Polska Sp. z o.o. filed a cassation complaint. The company argued inter alia that the decision in this case was issued by a person whose mother in law sat in the panel of the judges in the VAC. At the hearing before the Supreme Administrative Court, the counsel for the PPO acknowledged that the decision of the first instance in the Patent Office was issued by an expert who is daughter in law of one of the judges.

The Supreme Administrative Court in its judgment of 28 September 2012 case file II GSK 1563/11 overturned the judgment of the VAC and sent it back for further reconsideration. The SAC held that despite the merits of the cassation complaint, there was a condition of nullity of the proceedings. The Polish Act on Proceedings Before Administrative Courts states that a judge is excluded in deciding a case in matters that concern his or her relatives in a straight line and in-laws to the second degree. In the present case, the mother-in-law is a first-degree relationship. The institution of exclusion of a judge is a procedural guarantee which consist of the impartiality of the judge that is identified with objectivity of the proceedings. The impartiality of judges is this kind of value for which the protection and execution is particularly important in a democratic state of law. Such defined impartiality should be identified with objectivity that is expressed in the equal treatment of the parties of any proceedings, so that there is no favorable situation for any of them. The court proceedings must be conducted in such a way that there is not even an apparent impression of behavior that would be deemed as disregard of standards of impartiality, being a manifestation of judicial independence.

Trade mark law, case no. Sp. 30/11

October 23rd, 2012, Tomasz Rychlicki

On 27 February 2009, the Polish Patent Office granted the right of protection for the word trade mark PARADA R-215899 applied for the goods in Class 18 such as leather and imitations of leather, and goods made of these materials and goods in Class 25 such as clothing made of natural and synthetic materials, leather garments, footwear, headgear, by the Polish company HenMar sp. z o. o. from Dębica.

IR-650695

PRADA S.A. from Luxembourg filed a notice of opposition. The company argued that the trade mark PARADA is confusingly similar to its word-figurative trade mark PRADA IR-650695 registered in Poland with the earlier priority of 1995, for goods in Class 18 and Class 25.

The Adjudicative Board of the Polish Patent Office in its decision of 12 October 2012 case no. Sp. 30/11 ruled that PARADA and PRADA are not similar. In the opinion of the PPO, although compared signs are composed of similar letters, however, the deciding factor was the conceptual aspect of both trade marks. In Polish, the word “parada” has a specific meaning and means, among others, spectacular show with the participation of many people (parade). The PPO decided that the semantic aspect proves that both signs will be perceived differently and there is no risk of misleading the public as to the origin of goods. Further allegations, based on the reputation of PRADA trade mark, have become, therefore, irrelevant. The decision is not final yet. The complaint may be filed before the Voivodeship Administrative Court in Warsaw.