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Archive for: Polish Patent Office

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The Voivodeship Administrative Court in Warsaw in its judgment of 18 December 2012 case file VI SA/Wa 1340/12 repealed the decision of the Polish Patent Office and ruled it should not be enforceable.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 VI SA/Wa 1376/11

January 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.

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.

Trade mark law, case II GSK 2324/11

October 5th, 2012, Tomasz Rychlicki

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

iR-0579396

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

R-183901

The Voivodeship Administrative Court in Warsaw in its judgment of 2 June 2011 case file VI SA/Wa 334/11 dismissed it. The Court agreed with the the assessment of the PPO, and repeated that an entrepreneur, who for the goods of the same type, chooses a sign that is similar to a trade mark with earlier priority, given that there is an infinite number of signs to be selected, acts at its own risk. S&S Smiczek & Smiczek Hanna Smiczek brought a cassation comaplaint.

The Supreme Administrative Court in its judgment of 10 July 2012 case file II GSK 2324/11 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that the important drawback of the contested judgment and the decision of the PPO was the assumption on the similarity of the opposed trade marks that was based on the mere fact of the use in their visual aspect, a form of tree, without trying to examine whether the different presentation, including the type and shape of the tree, used in these signs, allowed for the adoption of the view that there exists the similarity of the signs. As a result, the Polish Patent Office, followed by the VAC, accepted the monopoly (exclusiveness) of the company to use very idea of the tree element in its trade mark. The SAC recommended that the VAC should also take a stand on the consequences of the fact that S&S Smiczek & Smiczek Hanna Smiczek used its trade mark for a considerable period of time from 2002. After almost 5 years, Julius Sämann Ltd. initiated a civil action against the S&A. The civil proceedings with regard to trade mark infringement ended before the Supreme Court in its judgment of 14 October 2009 case file V CSK 102/09. The Supreme Court dismissing a cassation appeal filed by Julius Sämann Ltd., based on the argument that long-standing and undisturbed use of the sign in question, in connection with the principle venire contra factum proprium, according to which, if the party continued at a specific practice, it can not rely on its illegality, if other entity accepted such practice in good faith and it could suffer injury as a result of the changes. The application of this rule would come into play especially in a situation, if after the reexamination of evidence, the similarity of opposed signs has been established, and there was not any proof of bad faith on S&S side. The argument that there was bad faith requires evidence and proof, because good faith is presumed. Whether, in connection with long-term use, the S&S trade mark has acquired distinctiveness under average conditions of the market, a feature which is required for any sign to be registered, could speak in favor of the principle of venire contra factum proprium. In addition, marking the goods produced by S&S with its own trade mark, which are the goods of the same kind as products of Julius Sämann Ltd., undoubtedly positively affected the overall demand for such goods on the marker. Therefore, the invalidation of S&S trade mark in situation of its use in good faith, could easily lead to the acquisition of the customers of S&S by Julius Sämann Ltd., without incurring the costs which were attended by S&S in the promotion of the sign, The Court found it difficult to accept. The SAC also held that it should be borne in mind that the right of protection for a trade mark, as every object in the closed list (numerus clasus) of property rights, is admittedly an absolute personal right effective against all (erga omnes), however, this right is not subject to absolute protection. In the light of the general principles for the exercise of property rights as defined in the Polish Civil Code, the boundaries of this right are defined in the Acts and the rules of social coexistence. The Polish Industrial Property Law also refers to these rules. For these reasons, the circumstances giving rise to the allegation of the infringement of the principle of venire contra factum proprium, are one of the limits to the exercise by the owner of its legitimate socio-economic use of the right of protection that derives from the registration of the trade mark. Thus, the invalidation proceedings started against the trade mark Forest Fresh R-183901, in violation of the above mentioned principle, may be considered as the abuse of the right of protection for a trade mark by the proprietor of such a right, that is not entitled to the protection.

Trade mark law, case VI SA/Wa 1267/11

September 19th, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 3 October 2011 case file VI SA/Wa 1267/11 dismissed the complaint brought by the Polish law firm BSO PRAWO & PODATKI – Bramorski Szermach Okorowska Kancelaria Prawna Spółka komandytowa against the refusal decision of the Polish Patent Office to grant the right of protection for the word-figurative trade mark BSO legge & Tasse Z-344754.

Z-344754

The Court agreed with the PPO that the applied sign is almost identical with the word CTM BSO no. 001463017 and ruled that for the average recipient of legal services they are similar to intellectual property consultancy, patent, design and trademark agency, because the average consumer of legal services, who comes to the office lead by a legal advisor (radca prawny) or advocate, simply instructs his case in the belief that it returns to the competent professional. The Court could not deny the competence to lawyer who is dealing with the industrial property issues and cases, as this area of law is also subject to examination for people who would like to qualify to the legal profession. This judgment is final.

Trade mark law, case Sp. 202/12

September 11th, 2012, Tomasz Rychlicki

Apple, Inc. filed the request for invalidation of the right of protection for the word-figurative trade mark A.PL registered for goods and services in Class 9, 35 and 42 and owned by the Polish company Internet S.A. from Warszawa. The Polish company also provides an online grocery store under the domain name a.pl. The main arguments presented by the U.S. company were based on confusing similarity between the sign A.PL and national and Community trade marks that are owned by Apple. Arguments based on the unfair use of the reputation were also raised.

R-222253

The Adjudicative Board held the first hearing on 29 august 2012 case no. Sp. 202/12. However, due to the large volume of evidence supplied by Apple, the hearing was adjourned.

Procedural law, case VI SA/Wa 377/12

August 19th, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 12 July 2012 case file VI SA/Wa 377/12 held that adding to the complaint evidence which, according to the adversarial principle should be presented by a party in the administrative proceedings and have not been submitted to the PPO before a decision was issued, is deemed as delayed and cannot be taken into account when assessing the validity of a decision of the PPO. Transferring the burden of proof on the administrative court is inconsistent with the role of this court, which does not decide on administrative cases, but its rule is to control administrative decisions in terms of their compliance with the law.

Trade mark law, case VI SA/Wa 137/12

August 3rd, 2012, Tomasz Rychlicki

BP p.l.c filed before the Polish Patent Office a request for the invalidation of the figurative trade mark R-218916 registered for goods and services in Class 4, 31 and 39 and owned by Albert Korman. BP claimed similarity to its figurative CTM no. 1916550, word-figurative CTM BP no. 4100335 and figurative CTM no. 4236279, that were registered with the earlier priority for goods and services in the same classes. BP noted that it uses a combination of green and yellow colors, especially green and yellow figurative element of the trending-like sun rays on a circular or semicircular shape, for the identification of its services. The Company argued that the goods and services of the trade mark at issue are the same or similar. BP also relied on the judgment of the Polish Court for the Community Trade Marks and Community Designs case file XII GWzt 15/08 in which the court found that the BP’s trade mark is highly distinctive, which may result from both the lack of descriptive elements in the sign as well as with the reputation and goodwill, which the mark has among the buyers.

R-218916

The Voivodeship Administrative Court in Warsaw in its judgment 11 April 2012 case file VI SA/Wa 137/12 ruled that due to the fact that the Polish Patent Office correctly decided that there were no indications that the applied trade mark was identical or similar to a trademark for which a right of protection was already granted , therefore, it was pointless to assess the reputation of the previous sign. Since the PPO properly determined that the marks are not similar, any considerations about the use of another’s reputation were not justified. The Court repeated that dissimilar signs cannot produce associations, so there can be no conscious imitation and profiting from someone else’s reputation. The correct view is that the lack of similarity between the signs eliminates the need to examine the use of another’s reputation, as the “precondition” of accepting the argument that the use of reputation has happened, is to determine the similarity between the signs, and the second condition is to establish the applicant’s trade mark has the reputation. This judgment is not final yet.

Trade mark law, case VI SA/Wa 2458/11

July 27th, 2012, Tomasz Rychlicki

On 6 September 2007, the Polish Patent Office granted the right of protection for the word trade mark PRESTIGE OLIMPIC R-197858 for goods in Class 19 such as non-metallic construction materials, timber liners, bonded and not bonded floorboards, flooring lumber, sawn wood, planed and machined wood, construction wood, laminate flooring. This sign was applied for by the Polish company Barlinek S.A. The International Olympic Committee filed a notice of opposition to the decision of the Patent Office. The IOC noted that the name INTERNATIONAL OLYMPIC COMITEE is used since 1894, and the questioned trade mark causes the violation of its property rights and personal interests, in particular the right to the company name. In addition, the IOC claimed that the sign PRESTIGE OLIMPIC is similar to the CTM THE OLYMPICS no. 002827632, registered with the earlier priority, which may cause a risk of consumers confusion. Barlinek S.A. did not agree with such arguments and argued that both trade marks are completely different. The Company pointed out that the goods in Class 19 that are marked with the sign THE OLYMPICS have not been introduced on the Polish market.

The Polish Patent Office in its decision of 6 December 2010 no. Sp. 345/09 dismissed the request. According to the PPO, the words “Olympic” and “Olympics” are similar, but without prejudice to the similarity of signs. The PPO ruled that in this case, the recipients of goods are specialists in the construction industry, who are buying all the supplies at special stores and warehouses or directly from the manufacturers. Therefore, they are deemed as people paying bigger attention, as professionals, to the goods that they purchase. Such professional customers are well-versed in quality, product names and parameters as they are interested and will pay a special attention to who is the manufacturer of the goods.The IOC filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 February 2012 case file VI SA/Wa 2458/11 dismissed it. The Court held that the PPO ruled correctly that multiple signs and trade marks are used as the determination of the Olympic Games. However, no evidence was submitted that the sign THE OLYMPICS is being used in relation to the Olympics. The owner of the CTM did not show the connection between the CTM and any other goods. The sign THE OLYMPICS cannot be deemed as reputed trade mark only because its translation to Polish means Olympic games or Olympics. It is necessary to demonstrate the link between the mark and the goods and/or services. Therefore, the Court decided that the reputation has not been proven. Both signs are written in standard fonts, without any particular distinguishing features, so the same way they are written does not cause that any of the elements of these characters is predominant. The PPO correctly concluded that, despite the similarity of words in the second position in both characters, it cannot be said that the trade marks are confusingly similar. The judgment is not final. The IOC filed a cassation complaint.

Trade mark law, case VI SA/Wa 301/12

July 23rd, 2012, Tomasz Rychlicki

On 21 December 2007, the Polish Patent Office granted the right of protection for the word trade mark TEFAPAK R-199130 for goods in Class 1 such as graphite for industrial purposes, in class 6 for base metal alloys, and in Class 17 for sealants.

E.I. du Pont de Nemours & Company filed a notice of oppostion, arguing that TEFAPAK is similar to its reputed trade mark TEFLON R-49573, that was registered with the earlier priority of 27 September 1968 for goods in Classes 1, 2, 17, 21 and 22.

The Adjudicative Board of the PPO in its decision 17 November 2010 case no. Sp. 388/09 dismissed the opposition. The PPO did not find any similarities between both trade marks. E.I. du Pont filed a complaint against this decsion.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 301/12 dismissed it. The court confirmed that, since the signs are not similar the reputation of an opposing trade mark is irrelevant. This judgment is not final yet.

Trade mark law, case VI SA/Wa 1269/11

July 18th, 2012, Tomasz Rychlicki

On August 2008, the Polish law firm BSO PRAWO & PODATKI – Bramorski Szermach Okorowska Kancelaria Prawna Spółka komandytowa from Wrocław applied to the Polish Patent Office for the right of protection for the word-figurative trade mark BSO RECHT & STEUERN Z-344756, for legal services in Class 45. The PPO refused because of the similarity with the CTM BSO no. 001463017 registered with the earlier priority for services in class 41 such as education and providing of training relating to intellectual property, patent, trademark, design and legal matters and relating to research and development for others, and in Class 42 for services such as Intellectual property consultancy, patent, design and trademark agency, including legal consultancy, engineering services, research and development for third parties and computer programming and services in relation to computer hardware, all relating to intellectual property, patent, trademark, design and legal matters and relating to research and development for others. This CTM is owned by the Danish IP law firm BUDDE SCHOU A/S. The PPO stated that the phrase “Recht & Stenern” (English: tax and law) is devoid of any distinctive character, as an expression, which determines only the scope of activities. This expression is not noticeable in the sign, because it is written in very small letters at the bottom, so there is no significant impact on public perception. Undoubtedly for the PPO, the acronym BSO was predominant, and the fact that the applied trade mark consists of three words and the earlier sign only one – BSO, was not important in this situation for the assessment of similarity. The PPO concluded that the same assesment applies to the figurative element. BSO PRAWO & PODATKI filed a complaint against this decision.

Z-344756

The Voivodeship Administrative Court in its judgment of 3 October 2011 case file VI SA/Wa 1269/11 dismissed it. The Court ruled that a stylized symbol of section sign (paragraph) is generally accepted as an indication of the persons and entities providing legal services. Such a figurative element, no matter in what color or in any styling, recognizable as a double S symbol, is perceived to be connected with the law. It was difficult to accept that such an element, in a graphic that indicates the applicant’s company, would distinguish it from other law firms or companies providing legal services. The difference in the territorial operation of both companies was irrelevant for the PPO and the Court, because the CTM covers the entire territory of the European Union, and both companies are located there, in different Member States. This judgment is final.

Trade mark law, case VI SA/Wa 1409/11

June 27th, 2012, 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 the 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-175 055 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.

Trade mark law, case VI SA/Wa 1780/11

June 19th, 2012, Tomasz Rychlicki

The Polish company NTT System S.A. applied for the right of protection for word trade mark NTTonLine Z-330715 for services in Class 35. The PPO noted that the entry in the list of services such as “management of the licensing of goods and services to third parties”, was placed in the trade mark application in Class 35. The PPO ruled that it is a very general term, referring to all goods and services. Meanwhile, according to International Classification of Goods and Services “licensing of industrial property” and “licensing of computer programs” should be classified in class 45. Therefore, PPO asked for clarification of the original term – so as to eliminate any doubt regarding the scope of protection of the trade mark NTTonLine, because the general reference to all goods and services could in fact raise the risk of inclusion of general terms that belong to the different classes. NTT System did not submit any additional documents or corrections and the PPO discontinued the examination proceedings. NTT filed a complaint against this decision, and later withdraw it.

The Voivodeship Administratice Court in its order of 8 December 2010 case file VI SA/Wa 2122/10 was required to examine whether such withdrawal is not intended to evade the law or if it would leave in force a void decision. The Court ruled that that withdrawal was acceptable in this case. NTT filed a cassation complaint, and the Supreme Administrative Court in its order of 9 August 2011 case file II GSK 1127/11 annulled the order of the VAC and returned the case for further reconsideration.

The Voivodeship Administrative Court in its judgment of 5 April 2012 case file VI SA/Wa 1780/11 found that this time NTT System did not request the withdrawal of the complaint, and demanded a hearing. The Company argued that it is not true that the services listed in Class 35 are general in nature, and they need to be clarified, because for all general terms in the Nice Classification are marked with an asterisk, and only such terms should be clarified. Moreover, the contested final decision of the Polish Patent Office violated the law as it was issued by an unauthorized person – an expert not having the appropriate authority to consider this particular case. Such authorization should be granted by the President of the PPO. The Court held that the most important is the recommendation that the particular text appearing in the alphabetical list should be used as the indication of goods or services, not a general term. And the mere fact that a specific good or service are listed in alphabetical order does not affect the individual decision of national industrial property offices on the possibility of registration of the mark for such goods or services. The wording of the list of goods and services must be clear not only for the applicant, but also for third parties who either may submit an opposition to the grant of the right of protection, or simply by applying or using the sign, they wish to avoid a collision with a similar trade mark with an earlier priority. The court considered the request of the PPO that was addressed to the applicant in order to clarify the list of services, as justified. The Court ruled that the President of the Polish Patent Office is empowered to authorize certain persons not only to make decisions on her behalf in certain matters, but also to select of experts or assessors to act in certain cases. The expert examining the case was properly authorized by the President of the PPO. Taking into account all the arguments, the Court dismissed the complaint.

Trade mark law, case VI SA/Wa 1222/11

June 12th, 2012, Tomasz Rychlicki

On January 2000, the Polish Patent Office registered the trade mark DACH-BUD PERDKOWIE R-116968 for goods in Class 19 and services in Class 37. This sign was applied for by Polish entrepreneurs Krzysztof Perdek and Zbigniew Perdek Zakład Ogólnobudowlany DACH-BUD in 1996. Przedsiębiorstwo Budownictwa Ogólnego DACH BUD Spółka z o.o. from Wrocław filed a request for invalidation. DACH BUD argued that at the time of trade mark application, it was the only business that has used the sign DACH BUD as its company name. In 2002, one of the shareholders of the present company DACH BUD Spółka z o.o., has filed a request for invalidation, but it was dismissed by the PPO and the Voivodeship Administrative Court in its judgment of 22 December 2005 case file VI SA/Wa 337/05.

R-196146

Also in this case, the PPO dismissed the request and decided that the proceedings were separate and independent in relation to proceedings that were held before on the request of the predecessor of DACH BUD. According to the PPO, the request based on the provisions of Article 8(2) of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, was unjustified, and there were no grounds to invalidate the right of protection. That provision states that the registration of a sign which infringes personal or property rights of third parties, has to be refused. All the personal interests that are protected under the provisions of the Polish Civil Code, are identified among the rights of a personal nature. The name (firm) of the limited liability company (spółka z ograniczoną odpowiedzialnością) is the name under which the company is established according to the provisions of the Polish Code of Commercial Companies. The name of business/entrepreneur is treated as its personal right and as such is protected as the right to company name. According to legal commentators, it is an absolute personal right of an entrepreneur, and it is effective, erga omnes, against all. Its content is defined as the ability to use the company name to identify business/entrepreneurs on the market. The company name of a private person or entrepreneurs acting as a commercial companies, is not transferable. The Polish legal doctrine and case law established the view that the registration of a sign that is corresponding to the designation of another entrepreneur, that was used before the registration of that trade mark, affects the personal interests of such entrepreneur. However, that interference in the sphere of personal property, and more specifically – in the right to the name of the entrepreneur, may also occur in case of use of the part of that name, if it is a part that is fulfilling the function that sufficiently individualize an entity, i.e. that allows to uniquely identify and distinguish the company from other private or legal (corporate) persons. The PPO ruled that a similar position should be adopted in case of registration of a figurative sign, which in the word element contains the company name (firm) of another entity, or a significant part of it. The PPO noted that the company did not exist at the filing date of the disputed trade mark, and it could not effectively rely on the infringement of its right to the company name by the disputed sign, Therefore, if the applicant’s right was not the right “with a better priority”, there were no grounds to consider the request. In the opinion of the PPO, in the exercise of its personal interests, the applicant could rely only on the right enjoyed by it exclusively, and not by others. In particular, the company could not claim and invoke any right that was enjoyed by its shareholder – a private person. DACH BUD Spółka z o.o. filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 January 2012 case file VI SA/Wa 1222/11 agreed with the PPO and dismissed it. The Court noted that in case of conflict of rights, in this case, the protection right for a trade mark with a personal interest that includes the right to company name, the priority is to protect the personal interest. However, the registration of a trade mark that is identical or similar to a company name does not prejudge the infringement of the right to a company name. This exclusive right is not a total absolute. Its limits are defined by the coverage (territorial and goals) and the time of actual activities of the entity that is using the name. The collision between identical or similar company name and a trade mark may occur only within these limits. This judgment is not final yet.

Trade mark law, case II GSK 666/10

June 4th, 2012, Tomasz Rychlicki

The Polish Patent Office granted the right of protection for the word trade mark Columbia R-182641 that was applied for by the Polish entrepreneur “ORION” Jerzy Czernek from Łódź. The German company Imperial Tobacco (EFKA) GmbH & Co. KG filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection, claiming similarity to its trade mark COLUMBUS IR-0613016 registered for some identical goods in Class 34. Mr Czernek argued that there is no likelihood of confusion between both trade marks, as the recipients of goods and services covered by those signs accurately identify the brand of cigarettes and they do not confuse them. The PPO agreed and dismissed the opposition. Imperial Tobacco filed complaint against this decision.

The Voivodeship Adminsitrative Court in its judgment of 25 January 2010 case file VI SA/Wa 1798/09 dismissed it. Imperial Tobacco filed a cassation complaint.

The Supreme Administrative Court in its judgment of 15 June 2011 case file II GSK 666/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that consumer’s attention focuses on the similarities and the first part of the sign. The SAC also noted that the VAC has not explained why it considered that eight-letter signs, that share the same 6 letters and the identical first two syllables, are completely different. In the case of identical goods, the analysis of similarity between trade marks should be particularly careful and thorough. The SAC noted that it should be always remembered that trade marks are to help customers to associate the product with the manufacturer, and not obscure the market and lead to confusion.

The Voivodeship Administrative Court in its judgment of 28 September 2011 case file VI SA/Wa 1541/11 reversed the contested decision, ruled it unenforceable, and returned the case to the PPO for reconsideration.

However, the Polish Patent Office in its decision of 4 April 2012 case no. Sp. 538/11 did not decide on the mertis of the case, becasue Mr Czernek waived his right of protection and Imperial Tobacco withdrew the opposition.

Trade mark law, case Sp. 468/11

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“.