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Archive for: Polish Act on Industrial Property Law

Trade mark law, case II GSK 607/09

August 31st, 2010, Tomasz Rychlicki

TRODAT POLSKA Sp. z o.o. from Warsaw applied for the right of protection for Pieczątka 2, Pieczątka 3 and Pieczątka 4 trade marks Z-294822, Z-294821 and Z-294823 in class 13. Pieczątka means “stamp” in English. The Polish Patent Office in letters dated 27 March 2007 informed the applicant that these signs are not capable of serving as trade marks due to lack of sufficient distinctive character and urged Trodat to submit comment on this issue. The applicant did not respond to the letters sent by the PPO, in particular, Trodat did not take any position on the reported lack of sufficient distinctive character.

Z-294821

The Supreme Administrative Court in its judgment of 14 July 2010 case file II GSK 607/09 held that the burden of proof rests on those who seek for legal consequences from a particular fact for itself (the applicant), it results from a series of obligations incumbent on the applicant, including the obligation to provide explanations, to take an active part in the proceedings and to submit precise requests. These obligations are provided in articles 145(2) and 152 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, in connection with Regulation of the Prime Minister of 8 July 2002 on filing and processing of trademark applications, Journal of Laws (Dziennik Ustaw) No 115, item 998 with subsequent amendments.

Article 145
1. Subject to paragraph (2), where the Patent Office finds that the statutory requirements for the grant of a right of protection for a trademark have not been satisfied, it shall make a decision on refusal to grant the right.
2. Before the decision referred to in paragraph (1) is made, the Patent Office shall fix a time limit, within which the applicant is invited to react on the collected evidences and documents which imply the existence of grounds that may cause the right of protection to be denied.
3. Where the statutory requirements are found not to have been satisfied in respect to only certain goods, a right of protection for the trademark in respect of these goods shall be first to be refused by the Patent Office. On the respective decision becoming final the Patent Office shall grant a right of protection for the trademark in respect of the goods, for which it can be granted.

Article 152
The Prime Minister shall, by way of regulation, determine the detailed requirements to be satisfied by a trademark application, the detailed rules and procedure to be applied in the course of examination of trademark applications including, in particular, the extent to which the relevant information may be disclosed to the public after the expiration of the period referred to in Article 143 and the manner in which it is made available, as well as the extent to which the Patent Office is authorised to make corrections in the list of goods and their classification. The requirements to be satisfied by trademark applications may not be determined in such a way as to encumber the applicant with excessive and unreasonable impediments.

The renunciation of the party – despite the invitation issued by the Polish Patent Office – to submit sufficient evidence, explanations, positions may not be of no importance in a situation where the party alleges that the PPO erred in its decision in this particular issue, as a result of breach of the obligation imposed on the PPO to clarify the circumstances of the case in accordance with Article 7 and 77 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments.

Article 7
Public administration bodies shall uphold the rule of law during proceedings and shall take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public.

Article 77.
§ 1. The public administration body is required to comprehensively collect and examine all evidential material.
§ 2. At each stage of proceedings a body can amend, supplement or withdraw rulings made regarding the examination of evidence.
§ 3. An body conducting proceedings as a result of having been required to do so by the body having jurisdiction to settle the case (Article 52) may, on an ex officio basis or on application by one of the parties, hear new witnesses or experts on circumstances that form the objects of such proceedings.
§ 4. Universally accepted facts and facts known to the body ex officio do not require proof. Parties to proceedings should be informed of facts that are known to the body.

The SAC noted that the provisions of the IPL that provides the possibility to request the applicant by the PPO to submit comments or issue a statement, in fact, serve to define the limits of administrative case, such as defining what is to be examined by the PPO and to what extent this should occur. The PPO is required to make an invitation before taking a decision, therefore, before deciding on the matter. At this stage, it is possible to have the intervention of the parties, if, contrary to the intentions expressed in the request/application, the PPO, for example, does not cover by its activities of all elements of the case, or unreasonably restricts its borders.

Trade mark law, case VI SA/Wa 710/10

August 30th, 2010, Tomasz Rychlicki

On 25 July 2005, DOMAIN MENADA Sp. z o.o. from Warsaw applied for the right of protection for FILIPETTI MONTENERO SPUMANTE DEMI SEC dalla tradizione italiana trade mark in class 33.

The Polish Patent Office informed DOMAIN MENADA that there exist earlier trade marks owned by Belvedere S.A. and refused to grant the right of protection for the applied sign. DOMAIN MENADA filed a complaint in which the company argued that it is a member of Belvedere Group and provided a proper letter of consent.

Z-298140

The Voivodeship Administrative Court in Warsaw in its judgment of 21 June 2010 case file VI SA/Wa 710/10 held that in any case, the mere existence of links (relationships) between entities belonging to the same capital group cannot be regarded as a guarantee of quality of product bearing the disputed trademark. It should be noted that the capital group is a specific form of business, where corporate governance is exercised at several levels – both across the group and in individual companies. The mere membership in a capital group cannot be used as an argument that the signs from affiliated companies will not mislead consumers

Industrial design law, case VI SA/Wa 504/10

August 24th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 11 May 2010 case file VI SA/Wa 504/10 held that the scope of creative freedom is determined by the functional features of the object and the previous designs. In case of designs that must meet particular functional requirements, the scope of creative freedom is smaller than in the case of designs, which have more of the aesthetic features. Where the scope of creative freedom is broader, the differences between designs should be more noticeable than in the narrow scope of that freedom. The informed user must have information on the object, that is sufficient to assess the scope for creative freedom and be able to see even relatively small differences, that are important in the case of designs with little creative freedom.

Wzór Przemysłowy Rp-11748

This judgment concerned the industrial design “Podstawka reklamowa Star base” (in English: advertising stand Star base) Rp-11748.

Trade mark law, case VI SA/Wa 574/10

August 23rd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 15 June 2010 case file VI SA/Wa 574/10 ruled that Article 8 of the Paris Convention is a “conflicting norm” i.e. a norm/rule in private international law that points to appropriate substantive law that should be applied in a given case. The “trade name” on the basis of Article. 8, 9, 10 bis of the Paris Convention covers both the company name as an indication of business and company name in the subjective meaning. A trade name is the name of an entity being endowed with a right (merchant, trader, businessman – the subject of rights ), under which it is established and is performing its business activity, usually organized as the company/enterprise (the object of rights). It is therefore a designation of a business, which includes distinctive elements, and all these elements that allow for the individualization of economic activity.

R-194401

The disclosure of company’s name in the registry (National Court Register – Polish public register maintained by the selected regional courts and the Ministry of Justice which includes the register of enterprises) has a declaratory nature, therefore the priority of use decides on the priority of right to the company name.

Trade mark law, case II GSK 746/09

August 10th, 2010, Tomasz Rychlicki

This is the continuation of a story decribed in “Trade mark law, case VI SA/Wa 2284/08“. The Supreme Administrative Court in its judgment of 10 August 2010 case file II GSK 746/09 dismissed the cassation complaint brought by Zygmunt Piotrowski. The SAC held inter alia that the provisions of the TMA or the IPL do not provide in the course of the litigation proceedings lead by the Polish Patent Office, for the possibility to control the legality of the administrative proceedings that concerned the registration of a given trade mark. The legality of a decision granting the right of protection should be challenged in different proceedings.

Trade mark law, case II GSK 495/09

August 10th, 2010, Tomasz Rychlicki

On 14 March 1994, Polish entrepreneur operating under the name Usługi Pogrzebowe “Hades” Włodzimierz Wasilewski from Częstochowa applied for the right of protection for HADES Z-130892 trade mark in class 45, funeral services. Another Polish entrepreneur operating under the name Nowak Tomasz Firma Pogrzebowa HADES from Łódź filed an opposition to a final decision of the Patent Office on the grant of the right of protection for HADES R-148641 trade mark.

R-148641

Tomasz Nowak claimed that the Polish Patent Office ruled on the discontinuance of examination proceedings for HADES Z-130892 because of the failure to pay application fees and on 6 March 1999, he decided to file for the right of protection for word-figurative trade mark HADES Z-198798 in classes 26 31 39 42. On 26 September 2001 the PPO granted the right of protection for HADES R-132619 trade mark. Tomasz Nowak argued that the resumption of proceedings by the Patent Office on the application of HADES Z-130892 trade mark, which led to the granting of the right of protection, deprived him of part of the right acquired in good faith and the possibility to obtain the protection for the next sign. According to Tomasz Nowak the decision on the grant of the right of protection for HADES R-148641 trade mark, not only violates his right to earlier acquired trade mark, but most of all it violates the principle of certainty and security of legal transactions. It leads to a situation where the market will experience two identical trade marks, registered for identical goods, however, enjoyed by the various owners, which is contrary the rules of trade mark law of course.

R-132619

The PPO dismissed the opposition and Tomasz Nowak filed a complaint against this decision of the PPO. He based its claims on provisions of article 8(1) and (2) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments.

Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;

Tomasz Nowak also challenged the examination proceedings which led to the registration of the questioned trade mark.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 January 2009 case VI SA/Wa 1941/08 ruled that legal provisions invoked in the complaint cannot be applied to assess the legality of the registration proceedings conducted by the PPO. Accordingly, the request for invalidation of right of protection of HADES trade mark under these provisions was irrelevant. The provisions of the TMA, or the IPL does not provide in the course of the litigation proceedings lead by the PPO, the possibility to control the legality of the administrative proceedings that concerned the registration of the questioned trade mark. The Court ruled that the allegations of violation of the administrative procedure by the PPO could only qualify as a basis for annulment of the decision. Tomasz Nowak was required to bring such claims in the complaint, however he did not so. Tomasz Nowak filed a cassation complaint.

The Supreme Administrative Court in its judgment of 15 June 2010 case file II GSK 495/09 dismissed the cassation complaint. The SAC ruled that the VAC could not review the decision on the grant of a right of protection for HADES R-148641 trade mark. The VAC had to decide within the scope of the complaint and shall be bound by the legal ground invoked by the requesting party. The SAC also expressed the view that the registration of the name of someone else’s company does not preclude the registration of a trademark but the right to a name of the company must be infringed, and the existence of such right has not been proven by Tomasz Nowak. The complainer has not demonstrated that he had the right to name of the company. Actually both entrepreneurs have the right to use HADES sign as their business name. The complainer also argued that the mere prior use of the sign and not in relation to the applicant, but in relation to the entitled to the right of protection, provides a sufficient argument that the questioned trade mark infringes personal or economic rights of third parties. The SAC ruled that this view is incorrect. It clearly refers only to infringement of personal or property rights.

Industrial design law, case VI SA/Wa 599/10

August 2nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 12 May 2010 case file VI SA/Wa 599/10 held that the factual justification of the decision of the Polish Patent Office should contain the facts that the PPO regards as proven, the evidence relied upon and the reasons for which other evidence has been treated as not authentic and without probative force. The legal justification should contain the legal authority for the decision with reference to the relevant law. Only justification prepared in accordance with these requirements allows for a full review of the contested decision. The Court upheld the contested decision and ruled it unenforceable because the PPO found that the design meets the requirement of individual character, but it did not explain which differences in shapings decide on their individual character. The position of PPO as to a small range of creative freedom was also not apparent from the justification.

Wzór Przemysłowy Rp-12232

This judgment concerned the industrial design “Plafoniera sufitowa” (in English: Ceiling plafoniere/ceiling-mounted chandelier) Rp-12232.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

Industrial design law, case VI SA/Wa 598/10

August 2nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 12 May 2010 case file VI SA/Wa 598/10 held that the court’s review of a decision issued by the PPO does not include a requirement to make additional findings for a case. The factual justification of the decision should contain the facts that the PPO regards as proven, the evidence relied upon and the reasons for which other evidence has been treated as not authentic and without probative force. The legal justification should contain the legal authority for the decision with reference to the relevant law. Only justification prepared in accordance with these requirements allows for a full review of the contested decision.

Wzór Przemysłowy Rp-12224

This judgment concerned the industrial design “Ramię ozdobne do opraw oświetleniowych” (in English: Decorative Arm for luminaires) Rp-12224.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

Trade mark law, case Sp. 334/05

July 30th, 2010, Tomasz Rychlicki

On 1 March 2004, the Polish Patent Office registered word-figurative trade mark CZUWAJ R-152214 (in English: “Be Prepared”). Związek Harcerstwa Polskiego – Główna Kwatera is the owner. The sign looks exactly the same as the Scouts Cross.

The final design of Scout’s Crass was approved during ZHP’s unification conference held on October 1-2 1918 which has choosen this sign as the official badge of Polish scouting In November 1918 the Polish Ministry of War decreed that the Krzyż Harcerski was the only civilian emblem that might be worn on military uniforms. The tradition continues to this day.

Nowadays, there are three major scouting organizations in Poland. Związek Harcerstwa Polskiego, Związek Harcerstwa Rzeczypospolitej and Stowarzyszenia Harcerstwa Katolickiego Zawisza.

Krzyż harcerski

ZHR filed a request for invalidation of the right of protection. The request was based on provisions of article 8(1) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments.

A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence,

The Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, provides more stricter regulations against registering such signs.

Article 131
1. Rights of protection shall not be granted for signs:

(…)

(ii) that are contrary to law, public order or morality, or

(…)

2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,
(ii) it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organisations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organisations performing activities in vital public interests, where these organisations’ activities extend to the entire territory of the State or to a substantial part thereof, unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organisation, to use the sign in the course of trade,

(…)

(v) it incorporates elements being symbols, in particular of a religious, patriotic or cultural nature whose use could hurt religious feelings, sense of patriotism or national tradition,

The Polish Patent Office in its decision case file Sp. 334/05 invalidated the right of protection. The PPO ruled that all Polish scouts’ organizations should have the right to use this sign.

This judgment is not yet final. A complaint may be filed to the Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 808/10

July 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its order of 28 June 2010 case file VI SA/Wa 808/10 ruled that according to article 143 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, the Polish Patent Office shall publish a trademark application immediately after the expiration of three months from the date of filing of that application. As from the date of publication any third parties may acquaint themselves with the trademark determined in the application and with the list of the goods for which the mark is intended. They may also submit to the PPO their observations as to the existence of grounds that may cause a right of protection to be denied. Therefore, anyone has the right to submit comments to a trade mark application, but filing such comments does not make someone a party to the examination proceedings. These observations are only material that will be taken into consideration when examining the trade mark application

The VAC also noted that according to article 246 of the IPL any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a right of protection within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, and according to article 164 of the IPL, the right of protection for a trademark may be invalidated in whole or in part at the request of any person having a legitimate interest therein, provided that that person is able to prove that the statutory requirements for the grant of that right have not been satisfied. In such cases, the person is a party to the proceedings. This case concerned Gobired trade mark R-222675 owned by Przedsiębiorstwo Handlowo-Usługowe MAREL PLUS Leszek Marcinowski from Gdańsk.

Trade mark law, case VI SA/Wa 369/10

July 19th, 2010, Tomasz Rychlicki

The Polish Patent Office (PPO) refused to grant the right of protection for “100 panoramicznych” trade mark (100 panoramic) Z-241510 applied for goods in class 16 such as brochures, books, journals, magazines, titles of magazines. The PPO held that this trade mark lacks sufficient distinctive character and that the sign is purely descriptive and therefore can not be covered by the right of protection. Agencja Wydawnicza TECHNOPOL Spółka z o.o. being the applicant in this case, filed a complaint.

The Voivodeship Administrative Court in Warsaw in its judgment of 11 May 2010 case file VI SA/Wa 369/10, held that secondary meaning is the result of a genuine and consistent use of a trade mark by the entrepreneur, in order to indicate in this way, the origin of the goods. The assessment of whether a sign has a secondary meaning must be decided by examining all the facts such as time of use, its market share, the ways and intensity of use, and all the data showing that a given group of customers will evidently assign the sign and the goods to a particular trader. The VAC repealed the PPO’s decision and ruled as unenforceable.

Trade mark law, case VI SA/Wa 452/10

July 19th, 2010, Tomasz Rychlicki

In 2009, the Polish Patent Office declared that the right of protection for REAL trademark owned by real SB-Warenhaus GmbH from Germany, lapsed partially. The German company requested for the suspension of the contested decision. The request stated that the contested decision would cause a negative economic impact for real SB-Warenhaus GmbH, which, through a Polish subsidiary, uses lapsed trade mark continuously since 1997. The German company has made far-reaching financial investments to build market position of REAL trade mark, in Poland – around 10 million PLN. In addition, the public awareness of the brand position, has not only financial backing but also social, because the company built on Polish territory large-area markets, which are operated under the name REAL, therefore, renaming the company and its markets would also affect the 13,500 employees. Given the increasing competition in the market, other competitors, could in good faith (or intentionally) use this trade mark. There was therefore a real risk that, until final completion of this case, the distinctive character of REAL trade mark would be weakened.

R-132135

The Voivodeship Administrative Court in its judgment of 15 June 2010 case file VI SA/Wa 452/10 decided to stay the execution of the questioned decision and ruled that if the decision of the Patent Office has not been suspended, REAL trade mark used by the Polish subsidiary could not be used, and others could exploit the position of this trade mark. The Court also agreed that financial outlays made for the creation and operation of REAL’s supermarkets, were large, and the scale of employment in these supermarkets and the necessary change of the company name and the supermarket, could adversely affect the situation of workers.

See also “Trade mark law, case VI SA/Wa 451/10“.

Trade mark law, case VI SA/Wa 451/10

July 17th, 2010, Tomasz Rychlicki

R-132135

The Voivodeship Administrative Court in its judgment of 15 June 2010 case file VI SA/Wa 451/10 decided to stay the execution of the questioned decision and ruled that if the decision of the Patent Office has not been suspended, REAL trade mark used by the Polish subsidiary could not be used, and others could exploit the position of this trade mark. The Court also agreed that financial outlays made for the creation and operation of REAL’s supermarkets, were large, and the scale of employment in these supermarkets and the necessary change of the company name and the supermarket, could adversely affect the situation of workers.

See also “Trade mark law, case VI SA/Wa 452/10“.

Trade mark law, case VI SA/Wa 2038/09

July 14th, 2010, Tomasz Rychlicki

Polish company Przedsiębiorstwo POLMOS Białystok Spółka Akcyjna, the owner of word-figurative and 3D trade mark “POLMOS ŻUBRÓWKA BISON BRAND VODKA” R-62081 and 3D trade mark R-85811, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection to word-figurative and 3D trade mark “VODKA Herbe de Pologne” R-155144, registered for BELVEDERE S.A.

R-62081

POLMOS argued, inter alia, that there is a significant visual similarity between trade marks at issue. Its bottle has a blade of grass, which is very dominant and attracts the attention of the average consumer. Such assessment cannot be undermined by the fact that there are few blades of grass in the bottle representing the questioned trade mark. POLMOS argued that the registration of “VODKA Herbe de Pologne” threatens the reputation of its trade marks, and emphasized the role of grass in the bottle as a motif indicating the origin of the product. POLMOS added that the purpose of BELVEDERE’s actions was the parasitic use of the reputation of earlier trade marks owned by POLMOS.

In the opinion of the Polish Patent Office (PPO) these trade marks were visually dissimilar because of different bottle shape, color, the presence of a label in the contested mark and the lack of labels in the opposed one, number and appearance of components in liquid. These signs were incomparable in the phonetic/aural aspect, so they were also dissimilar, as the opposed trade mark lacks lettering. In the conceptual aspect the questioned trade mark contains a bunch of herbs inside the bottle and the word “herbe” which indicates that the vodka is herbal, and the opposed sign, contains a longitudinal component, but this element in general is not like weed-grass. Consequently, due to lack of similarity the PPO held that the opposition is unfounded. POLMOS filed a complaint.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 April 2010 case file VI SA/Wa 2038/09 held that in the case of trade mark reputation, a sign has to be examined as a whole, as the right of protection was granted for such a designation. It can not be allowed to examine every element of the sign separately, in isolation from the whole trade mark.

R-155144

The Court also ruled that the similarity of signs is a prerequisite for examining whether in a particular situation there was infringement of the reputation of an earlier mark. See “Trade mark law, case II GSK 207/07“. The VAC held that the absence of the similarity of signs, which also includes the possibility of their association, is the argument that the presence on the market of goods bearing the sign at issue will not affect in any way the alleged reputation and distinctive character of POLMOS’ trade marks.

Industrial design and trade mark law, case II GSK 481/09

July 14th, 2010, Tomasz Rychlicki

This is the continuation of the history described in “Industrial design and trade mark law, case VI SA/Wa 710/08“. The Polish company decided to file a cassation complaint to the Supreme Administrative Court, hoping the Court would clarify the interpretation of article 117(2) of the IPL.

The Supreme Administrative Court in its judgment of 15 May 2010, case file II GSK 481/09 ruled that there is no issue of wrong implementation of article 11 of the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs. The Court noted that even the preamble of Design Directive explicitly states that Member States should remain free to fix the procedural provisions concerning registration, renewal and invalidation of design rights and provisions concerning the effects of such invalidity. Therefore, there is no need to refer a question to the Court of Justice of EU for a preliminary ruling. The SAC did not agree with arguments that the issue of finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights shall be decided by civil court and not by the PPO. The question of similarity of the questioned design and 3D trade mark should also be decided by the PPO. The Court did not follow arguments presented by the General Court in its judgment of 12 May 2010 in case T-148/08, Beifa Group Co. Ltd v Office for Harmonisation in the Internal Market, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG. However, the SAC did agree with the Polish company that facts of the case were not handled properly by the Voivodeship Administrative Court. Therefore, the SAC annulled the questioned judgments and returned the case to the VAC for reconsideration and ordered the Polish Patent Office to pay the Polish company a reimbursement of costs of the cassation compliant.