Polish IP & IT law – copyright trademark computer internet telecomm

Archive for: Art. 120(1) IPL

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.

Internet domains, case IV CSK 191/13

April 10th, 2014, Tomasz Rychlicki

The Polish company PASTA i BASTA Sp. z o.o. from Warszawa, the owner of the word-figurative trade mark pasta i basta 100 sposobów na makaron cafè R-212390 sued Restaurators Podlaszewscy Spółka Jawna from Toruń. PASTA i BASTA requested the court to prohibit Restaurators Podlaszewscy the use of restaurant name Pasta & Basta and to refrain from the use of Internet domain name pastaandbasta.com and to oblige the defendant to withdraw from the Polish Patent Office an application for the word-figurative trade mark pasta&basta Z-368187 and the withdrawal of the application for a Community trade mark and the award of 60.000 PLN.

The District Court dismissed the complaint and PASTA i BASTA decided to appeal. The Appeallate Court ordered Restaurators Podlaszewscy to cease the use of the name of the restaurant and refrain from using the website and ordered the defendant to pay 10.000 PLN. Restaurators Podlaszewscy filed a cassation complaint.

Z-368187

The Supreme Court in its judgment of 11 December 2013 case file IV CSK 191/13 held that if the competitor uses Internet domain name identical or similar to a registered trade mark, there may be trade mark infringement if such domain use may cause the likelihood of confusion as to the origin of the goods or services, or result in violation of the advertising function of the trade mark.

See also “Polish case law on domain names“.

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 1378/10

March 12th, 2012, Tomasz Rychlicki

The Polish Patent Office had refused to grant the right of protection for the word trade mark PUCHATEK CHOCO Z-321348 filed by Lubella Sp. z o.o. sp. kom. ak., for goods in Class 30. Lubella provided a letter of consent, which had been granted by Maspex Sp. z o.o., the owner of the prior-registered trade marks that include word element PUCHATEK. The PPO decided that it cannot consider the letter of consent, inter alia, for the reason that commercial relationships between the entities are not permanent. The use of a letter of consent in such a case could potentially cause problems when dealing with its withdrawal when the cooperation between the entities has ceased to exist. The PPO also remind that the Polish Industrial Property law provides for the institution of the letter of consent, only to signs whose protection lapsed. Lubella filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 20 July 2010 case file VI SA/Wa 600/10. Lubella filed a cassation complaint.

R-159163

The Supreme Administrative Court in its judgment of 16 December 2011 case file II GSK 1378/10 upheld the questioned judgment. The Court agreed with the PPO that Lubella was a different legal entity from the right holder of earlier trade marks that were considered as similar. The Court noted that it should be always borne in mind that the task of a trade mark is to distinguish the goods of one undertaking from those of other undertakings. The trade mark has to fulfill the function of determination of origin. This function is expressed objectively by commodity/goods, to which the sign is assigned, and it provides the consumer an idea about the qualities of a particular product, and subjectively i.e. the trade mark belongs to a given undertaking based on the right of protection that was granted to him or her, and it lets for the identification of the goods with the source that is indicated abstractly or by name. The protected trade mark should prevent from the risk of confusion on the part of consumers, because on the one hand it protects the economic interests of entitled entrepreneur, on the other hand it is aimed at consumers, in order to distinguish the origin of the goods. The SAC also reminded after the VAC that the Polish Patent Office does not examine the way in which the trademark is used on the market, except for its reputation, notoriety or secondary meaning i.e. acquired distinctiveness. The examination of a trade mark application is carried out in abstracto, that is, in isolation from market conditions.

Trade mark law, case IV CSK 393/10

October 5th, 2011, Tomasz Rychlicki

Hochland Reich Summer & Co. KG owns a three-dimensional trade mark IR-736770 in Poland, and Hochland AG is the owner of the right in registration of an industrial design Rp-5337. The 3D trade mark is not used in the clear registered form, but is marketed as a product package of ALMETTE cheese, with additional verbal and figurative elements. Both Hochland AG and Hochland Reich, Summer & Co. KG, together with Hochland Polska sued the Polish dairy cooperatives in Piątnica, because it has used the packaging for cheese, on which a graphic of a wooden pail that was similar to Hochland’s trade mark and design, was placed.

IR-736770

The District Court in Białystok in its judgment of 13 October 2009 case file VII GC 49/07 dismissed the suit and refused to recognize the trade mark as a reputed one. However, the Court agreed with the opinion issued by the expert witness that a clean pail, without any identifiers, stands out positively in comparison to other packagings, and by its distinctive shape is strongly associated with the Almette brand. The District Court agreed with Piątnica that this trade mark was not used in trade in its registered form, and that Hochland did not prove that the use of cup-like pail brings Piątnica unfair advantage or is detrimental to the distinctive character of Hochland’s trade mark, which is a prerequisite to the protection of reputed/renown trade marks. The Appellate Court in Białystok in its judgment of 26 February 2010 upheld these findings except the costs and the issue of trade mark use. Hochland filed a cassation complaint.

The Supreme Court in its judgdment of 10 February 2011 case IV CSK 393/10 found that the Appellate Court decided that the expert’s opinion had no probative value because of the unrepresentative range of research on which it was based, and as a result, the Court found that Hochland failed to prove that its trade mark is a distinctive sign, with reputation. The Appellate Court spoke on the inadequacies of the expert opinion only in the justification of the judgment, and not during the proceedings, which precluded Hochland from filing proper evidence. The Supreme Court ruled that renowned trade marks enjoy special protection – wider than the other trade marks, i.e., even if there is less similarity between trade marks or the goods. In the case of reputed signs, the risk of confusion or the likelihood of confusion is not required. The association with the earlier renowned sign is a sufficient condition. The Court noted that the Polish Industrial Property Law does not provide any definition of reputable trade mark, but only points to the specific conditions of protection. The Supreme Court emphasized that the definitions provided in the legal commentaries, as well as in the case law of the Court of Justice of the EU and Polish courts, differ in this respect. The Court noted that a reputable trade mark is recognized by a significant part of relevant public. The Polish legal commentators argue that such a sign must be known at least by 25 percent of relevant public, and if the percentage exceeded 50 percent, the reputation is always proved. The Supreme Court also noted that the protection of a reputable trade mark does not require the owner to prove that the use of a similar trade mark has brought its user unfair advantage or was detrimental to the distinctive character or the reputation of the earlier mark. A mere possibility of obtaining unfair advantage by the infringer or the very possibility of harmful effects to the distinctive character or the repute of the earlier trade mark, is a sufficient condition. Therefore, these conditions have normative and hypothetical nature. The Supreme Court held that the Appellate Court erred in the examination of the opinion of another expert witness, who showed that the use of the image of a wooden pail on the packaging of cheese, in the assessment of 69% of consumers may affect their decision on the purchase of goods, and therefore it could potentially influence the purchase of the goods produced by the defendant in its packagings. This circumstance was important for assessing whether the use by the defendant of Hochland’s trade mark could bring Piątnica unfair advantage at the expense of the owner of the trade mark, who first used the sign and incurred substantial costs for its promotions within a few years.

The Appeallate Court in Białystok in its judgment of 7 July 2011 case file I ACa 305/11 was bound by the decision issued by the Supreme Court. The Court pointed out that according to the opinion of Grzegorz Urbanek, who was appointed as an expert witness, the wooden pail is associated to the Almette brand in the perception of most respondents. Both the opinion and attached results showed that even a same wooden pail without and with identifiers has the same effect, i.e. the half of the respondents, because of the packaging, was willing to buy the Almette cheese, and not other cheese of the same type but in the same packagings. Therefore, the Appellate Court prohibited Piątnica to use in the course of trade of a figurative sign representing a wooden pail with a handle, on the packaging of its cheese products. Piatnica still uses the packaging for its cheese, which is similar to a wooden pail. The dairy cooperatives replaced the image from the packaging with the milk-churn with pouring milk.

Tax law, case I SA/Po 210/11

September 26th, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in Poznań in its judgment of 28 Jue 2011 case file I SA/Po 210/11 held that a subsidiary company is allowed to depreciate trade marks that were transferred to it as an apportionment, starting from the first day of a month, after one month the Polish Patent Office has granted the right of protection for these signs.

Trade mark law, case II GSK 466/10

July 5th, 2011, Tomasz Rychlicki

Aquatherm GmbH registered a single green color determined by RAL 150 60 40 as a trade mark IR-863506 for goods in Class 19 such as rigid pipes of polypropylene for the supply of drinking water and heating and air conditioning systems in houses, office buildings and industrial buildings. The Company sought the recognition of the protection of its trade mark on the territory of the Republic of Poland based on the provisions of the Madrid Agreement Concerning the International Registration of Marks.

IR-863506

On 11 July 2006, the Polish Patent Office transmitted to the International Bureau in Geneva a notification of the grounds which prevent the protection of an international trademark to be recognised on the territory of the Republic of Poland. The PPO decided that according to Article 120 of the Polish Industrial Property Law this trade mark cannot distinguish the goods, because it is a single color and it is devoid of sufficient distinctive character.

On 20 April 2007, the Patent Office sent a letter to the International Bureau with information concerning the correction of a clerical error in the notification dated 11 July 2006, informing that the provisional refusal to recognize the protection should include Article 129(1)(ii) and Article 129(2)(i) of the IPL and not Article 120 of the IPL. At the same time, the PPO did not consider the request of the Aquatherm GmbH to initiate an administrative hearing on the correction of this error. The PPO pointed out that the correction did not change the legal basis of the notification. The difference in the numbering of Articles 120 and 129 was a result of unfortunate, in this case, close arrangement of numbers 9 and 0 on the computer keyboard.

The Polish Patent Office in its decision of 9 May 2008 case DT-IR-863 506 refused to recognize the protection. Aquatherm GmbH filed a request for re-examination of the matter, but it was dismissed by the PPO in its decision of 10 June 2009 case PT-430/08 IR-863 506. The PPO did not agree with the Aquatherm GmbH that the registration on its behalf of the earlier trade marks such as IR-832895 or IR-837655 justifies the registration of the applied sign because each case is decided according to individual circumstances. The PPO held that it has not changed, as a result of correcting errors, the legal basis of the refusal.

Aquatherm GmbH filed a complaint against these decisions. The Company argued that the PPO infringed on Article 5(2) of the Madrid Agreement because it took its decision after the expiration of one year term that is calculated from the date of the international registration of the mark. The provisions that were used as the basis for refusal, were first indicated in the letter of 20 April 2007. Aquatherm GmbH argued also that the PPO mistakenly determined that the goods included in the list of goods and services are everyday consumer goods targeted for mass audiences, and that the green color is commonly used for the determination of water supply pipes, and aqueous solutions. According to the Company, the PPO has not made an exhaustive evaluation of the evidence, in particular, it completely ignored the key evidence submitted by the company in a statement of the Polish Corporation of Sanitary, Heating, Gas and Air-Conditioning Technology which included information on whether a given color may indicate the manufacturer
on the market of installations polypropylene systems, and whether the green color used as designation of pipes or installations allows the buyers to identify these products with Aquatherm GmbH.

The Voivodeship Administrative Court in its judgment of 3 December 2009 case file VI SA/Wa 1452/09 dismissed the complaint. The VAC held that the provisional refusal cannot be considered ineffective. According to the Court, the PPO indicated the grounds for refusal which was in accordance with the Rule 17 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. The Court noted that in the case of color per se its concrete distinctive ability must be interpreted in the light of public interest, which is based on the rules of the limited reduction of the availability of colors for other entrepreneurs who offer goods or services of the same kind as the goods or services covered by the registration application. The basic function of the trade mark is to guarantee the final consumer or user the identity of the origin of the goods or designated services bearing the trade mark by letting them distinguish the goods or the service of goods or services of different origin. The distinctive character of the sign is based on such features which in the minds of consumers clearly indicate that a particular product bearing a given trade mark comes from the specific company. The VAC noted that in relation to the color per se, it is assumed that the existence of primary distinctive characteristic (without any prior use) is possible only in exceptional circumstances, especially when the number of goods or services for which the mark is applied for is very limited and when the relevant market is very specific. The Court noted that the green color in relation to the applied goods is not unusual. The VAC agreed with the PPO that, in the case of green color used for the pipes used for water flow, there is a risk that consumers will associate it with nature, therefore, it should not be monopolized by one company, in particular, that this shade of green RAL 150 60 40 is also not original.

Moreover, the VAC found that the Patent Office has rightly used the example of PN-70/N-01270 standards Guidelines for marking of pipelines. The standard recommends that the painting for the identification of pipelines made of carbon steel or other materials susceptible to corrosion should be coordinated with anticorrosive painting in which the topcoat should also fulfill the function of identification. It is customary to use green for water and chemical solutions that pose no chemical and thermal threat. The Court noted that the statement of the Polish Corporation of Sanitary, Heating, Gas and Air-Conditioning Technology could be helpful to support Aquatherm position, but also found that such a document can not be regarded as expert evidence under the provisions of Polish Administrative Proceedings Code or substitute evidence for opinion polls.

The Supreme Administrative Court in its judgment of 15 April 2011 case file II GSK 466/10 dismissed the cassation. The SAC agreed with the findings included in the judgment of the VAC and ruled that the provisional refusal to recognize the protection is, by its very nature, some kind of a general statement issued by an authorized body of the state that is the party to the Madrid Agreement, and it includes the grounds which prevent the protection of an international trademark to be recognized on the territory of the Republic of Poland. The reasons given in the notification of provisional refusal set the boundaries within which the Polish Patent Office then investigates the case and its matter. However, as it was mentioned, the notification is of a general (signaling) nature and it is clarified in a subsequent administrative proceedings. In the event of a dispute, the position included in the notification is subject to detailed examination by the administrative courts, reflecting inter alia the context of a trade mark application, the nature of the applied sign, etc. As a consequence, the reasons of a provisional refusal should be explained in general terms and take into account all the circumstances specified in the notification by the authority.

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

June 6th, 2011, Tomasz Rychlicki

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

Z-307435

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

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

Trade mark law, case VI SA/Wa 1122/10

February 11th, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 25 October 2010 case file VI SA/Wa 1122/10 ruled that a trade mark application and examination case cannot be decided based on general assumptions and in an automatic way, because it is always resolved with regard to its specific conditions and references. The Polish Patent Office is required to conduct proceedings in such a way as to increase the trust of citizens in the State bodies and public awareness and appreciation of the law. According to the mentioned above principles, the PPO is required to precisely explain the circumstances of the case, respond to all claims and allegations and to include both public interest and the interests of the party, in the decision rendered.

Trade mark law, case VI SA/Wa 1090/10

January 20th, 2011, Tomasz Rychlicki

Polish entrepreneur “MALWA” Tea Wojciech Fabisiak from Lubiszyn applied for the right of protection for FITO APTEKA Z-327704 trade mark for goods in Classes 05, 30, 35 and 39 such as medicinal tea, medicinal drinks, medicinal herbs, tinctures of herbs for medicinal purposes, extracts of herbs for medicinal purposes, herbal tea, medicinal herbs, dried herbs, herbal mixtures for medical purposes, tea, ice tea, fruit tea, instant tea, coffee, coffee substitute, coffee substitute vegetable preparations, retail services and/or wholesale to third parties in the field of herbs, packaging of herbs, tea packaging. The Polish Patent Office refused to grant the right of protection. The PPO found that the sign in question contains two verbal elements “Fito” and “Apteka”. The word “fito” according to the Dictionary of Foreign Words PWN (published by PWN, in 1993) is a first element of compound words that are denoting plants, for plants (from Greek “phyton” – plant). The word “Apteka” (in English: pharmacy) indicates the type of store where drugs are sold or made, as well as herbs, some cosmetics, pharmaceuticals, herbal teas, coffee. The PPO ruled that the applied signs lacks distinctive character. MALWA filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 November 2010 case file VI SA/Wa 1090/10 dismissed it. The VAC agreed with the PPO and held that the trade mark is devoid of distinctive character, where the words making up the sign in question have their specific meaning, both alone and in combination. The trade mark should provide information on the origin of goods from a particular manufacturer, and no information about the type of goods. The Court ruled that in case of word trade marks the criteria for granting a right of protection are much stricter than for word-figurative trade marks (combined signs) due to less room for maneuver for other businesses wanting to use a given word. The registration of a word trade mark, which lacks fanciful elements, but consist of a generic name, may unreasonably restrict the right of other entrepreneurs to describe their products.

Trade mark law, case VI SA/Wa 501/10

October 25th, 2010, Tomasz Rychlicki

The Polish company EDIPRESSE POLSKA S.A. from Warsaw applied for the right of protection for word trade mark NEW Z-294152 for goods in Classes 16, 35 and 41. The Polish Patent Office refused to register this sign claiming that it does not have sufficient distinctive character that would allow to individualize the source of the goods. The PPO concluded that the sign is not distinctive, because it informs that the goods and services for which the registration is sought, are… new. EDIPRESSE filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 May 2010 case file VI SA/Wa 501/10 held that the common practice of the Polish Patent Office in registering trade marks containing descriptive elements was definitely too liberal, especially if it is considered that while examining the registrability, the future interest of other entrepreneurs in access to a given sign should be taken into account. According to the VAC there must be a significant reduction in the number of registered trademarks with the descriptive elements, geographical or generic names, as the result of understanding the proper function of a trade mark, because the primarily function of a trade mark is to indicate the origin of the goods from a particular undertaking. If, therefore, the applied sign may be perceived by the average consumer as information about the characteristics (properties) of goods or services, the origin from a particular geographic area, it cannot be a trademark due to lack of distinctive ability which is required for trade marks. The importance of the principle of freedom of access to certain descriptive signs must therefore lead to a significant reduction in the number of signs with descriptive elements that were registered as individual trade marks. The judgment is not final.

Trade mark law, case II GSK 708/08

June 26th, 2009, Tomasz Rychlicki

On June 2007, the Polish Patent Office issued a decision in which it has invalidated the right of protection for the word-figurative trade mark Lech-Pol R-132854 that was registered with the priority date of 1998 for goods in Class 33 and owned by Mariusz Lech Przedsiebiorstwo Produkcyjno-Handlowo-Uslugowe LECH-POL from Lask. The right of protection was invalidated in part for alcoholic beverages except for wine. The request was filed by the Polish company Fabryka Wódek POLMOS LAŃCUT S.A. from Lańcut. The company from Lańcut proved that it had a legitimate interest to have standing in proceedings before the Polish Patent Office, based on the fact that on May 2005 Mariusz Lech filed before the PPO a request to invalidate the right of protection for the trade mark lech wódka R-145285.

According to Polmos Lancut’s arguments, Mariusz Lech used the disputed trade mark only for products such as strong fruit wines. He was not imposing this sign on all other alcoholic beverages in Class 33. Mariusz Lech argued that, since mid-2001, he began efforts to start the production of vodka under the disputed trade mark. As a potential market for these articles he considered the teritory of Ukraine and the Republic of Poland. With this end in view, a design of bottles bearing these trade marks and labels were made. There were also discussions on the distribution of alcohol in Ukraine. However, with regard to the obstacles, the plan was not realized.

The PPO ruled that simply taking the preparatory steps which had no connection with a valid reason that could prevent the use of a trade mark, does not constitute the grounds for dismissal of a request for invalidation of the right of protection.

Mariusz Lech filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 5 February 2008 case file VI SA/Wa 2019/07 dismissed it. Mariusz Lech filed a cassation compalint. The Supreme Administrative Court in its judgment of 16 April 2009 case file II GSK 708/08 dismissed it.

See also “Trade mark law, case VI SA/Wa 1042/08” with regard to issues of non-use and genuine use.

Trade mark law, case II GSK 762/08

April 12th, 2009, Tomasz Rychlicki

Bauer Publishing House owns the word-figurative trade mark TWÓJ STYL R-69382 which is registered for goods such as printed matter, newspapers, magazines, books, packaging, clothing, shoes, advertisement services for third-party hotel and catering services. In 2007 the Polish Patent Office issued a decision on the lapse of the right of protection for TWÓJ STYL trade mark in class 25 for goods such as clothing and shoes.

The Voivodeship Administrative Court in Warsaw in its judgment of 6 February 2008 case file VI SA/Wa 1418/07 agreed with PPO’s decision and dismissed Bauer’s complaint. The Company filed a cassation complaint.

R-69382

The Supreme Administrative Court in its judgment of 12 March 2009 case file II GSK 762/08 has dismissed Bauer’s cassation complaint. The SAC ruled that, according to Polish case law and legal doctrine, the “genuine use” of a trade mark should be directed towards the consolidation of the brand in the market and should seek for its awareness between consumers and competitors. The opposite to “genuine use” is usually the occasional action taken in order to avoid a non-use accusations and actions that are taken other than for purposes of actual business activity. As part of the obligation to make genuine use of a mark, Polish doctrine established the concept of “preparatory action”, which allows to preserve of the right of protection for a trade mark and possible refutation of the non-use allegations. Examples of such “preparatory action” are: a contract of the importation of goods bearing the trade mark, intense advertising in the media or a license agreement for trade mark use. These are activities that aim to genuinely use a trade mark and such actions should be temporarily and functionally associated with the future use of a trade mark. According to the PPO’s findings the owner of TWÓJ STYL trade mark sold clothing with this sign, but this activity ended in 1998 with the last sale of these products.

Trade mark law, case III SA/Wr 499/08

January 30th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Wrocław in its judgment of 28 January 2009 case file III SA/Wr 499/08 held that the powers of sanitary authorities include the power to control of foodstuffs also in terms of their marking and labeling. According to article 120 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 subsequent amendments, the trade mark is protected as a whole regardless of its composition. So questioning the legality of a trade mark that was made by the State Sanitary Inspection, with the assumption that part of the label of foodstuff is a registered trademark, lead to an unacceptable invasion of the powers reserved by law for the Polish Patent Office. Indeed, such action of SSI would, in fact, “prohibit” the use of a trade mark, while the State Sanitary Inspection cannot encroach on the powers reserved by law for other state authorites.

Article 120
1. Any sign capable of being represented graphically may be considered as trademark, provided that such signs are capable of distinguishing the goods of one undertaking from those of other undertakings.

2. The following, in particular, may be considered as trademarks within the meaning of paragraph (1): words, designs, ornaments, combinations of colours, the three-dimensional shape of goods or of their packaging, as well as melodies or other acoustic signals.

3. Any references in this Act to:
(i ) trademarks shall also mean service marks,
(ii) goods shall mean, in particular, industrial or handicraft goods, agriculture products or natural products, such as, in particular, waters, minerals, raw materials, as well as, subject to Article 174(3), services,
(iii) counterfeit trademarks shall mean identical trademarks illegally used or trademarks which in the course of trade can not be distinguished from the trademarks registered for the goods covered by the right of protection,
(iv) earlier trademarks shall mean the trademarks applied for registration or registered basing on the earlier priority.

A situation where an entrepreneur has advertised tea, using only, image of cannabis-like leaves cannot be considered as advertising of narcotic drugs or psychotropic substances. In this case, it was not a promotion of any other substances prohibited by the law because, there was no name of any specific drug or psychotropic substance. Moreover, this issue goes beyond the competence of the State Sanitary Inspection.

The cassation complaint was rejected by the Supreme Administrative Court in its judgment of 31 May 2010 case file II OSK 832/09.

Trade mark law, case II GSK 309/07

March 30th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 March 2007, case file VI SA/Wa 1998/06 ruled that the source of legal interest to seek a declaration on the lapse of the right of protection for a trade mark may be general rules of law that create the right of establishment of business activity (article 20 and article 22 of the Constitution of the Republic of Poland). However, any person requesting the Patent Office to make a decision on the lapse of the right of protection for the trade mark must prove, on pain of dismissal of such application, that the disputed trade mark limits business activity of an applicant, or it has negative impact the legal situation of the applicant. This case concerned ION R-110244 and ION WEST R-11020 trade marks.

The court deciding this case was aware that divergent views on the subject of legal interests are presented both in the legal doctrine and the case-law. One part of the legal doctrine and practising lawyers believes that a lack of legal interest justyfies the issuance of a refusal based on the formal reasons, and another part’s view is that in this case, the PPO should take the decision to discontinue the proceedings. The court cited the judgment of the Supreme Administrative Court of 7 September 1989, act signature SA/Ka 441/89 and its critical gloss written by Barbara Adamiak, published in OSP 1991/2/33.

The Supreme Administrative Court in its judgment of 25 January 2008 case file II GSK 309/07 ruled that the request for a referral to the Court of Justice regarding the question whether the article 12(1) of First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks allows Member States to introduce into the national law an additional substantial prerequisite regarding the legitimate interest, limiting the class of persons allowed to seek for a declaration on the lapse of the right of protection for a trade mark that was failed to be put to genuine use to those who are able to demonstrate their interest and depriving such possibility the business entities having the actual interest, including economic one, is unfounded.

Trade mark law, case III CSK 300/06

October 17th, 2007, Tomasz Rychlicki

The Supreme Court in its judgment of 22 February 2007 case file III CSK 300/06, held that each sign should be presented in a graphical way. This is understood in the case law as a visual perceptibility of the trade mark, i.e., a sign must be possible to be seen, even if it’s only a word trade mark, which is represented by writing letters. This case concerned the infringement of MIXEŁKO R-116044 trade mark owned by ALMAR spółka z ograniczoną odpowiedzialnością spółka komandytowa from Kraków.

Trade mark law, case DT-9/06

September 20th, 2007, Tomasz Rychlicki

The Polish Patent Office in its decision of 17 August 2006, case file DT-9/06 has rejected a request to register a motion trade mark (the application was filled as the international registration IR-776498).

IR-776498

The examiner found that such sign (described as: movement mark: the colours in the waves are changing continuously from red to green upwards from bottom left to top right in an 8-second time span) can not be shown in graphic form with the use of images, lines, symbols in the manner that such presentation is at the same time clear, precise, compact, easily accessible, comprehensible, durable objective and uniform, which in consequence is devoid of distinctive character.

Trade mark law, case II GSK 248/06

July 21st, 2007, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 55/06“. Piotr Dyszkiewicz and Zbigniew Anozy – both partners of civil partnership, unsatisfied with the judgment of the Voivodeship Administrative Court in Warsaw, have filed a cassation complaint.

Z-223847

The Supreme Administrative Court its judgment of 22 March 2007 case file II GSK 248/06 repealed both the questioned order of the Polish Patent Office and the judgment of the VAC. The SAC based its conclusions on procedural matters. According to the SAC, all problems discussed by the VAC with regard to the co-ownership of THERMO SHIELD Z-223847 trade mark application and partners who quit the cvil partnership, were not a procedural issue, but it concerned very important merits, namely, who should be granted the right of protection for the trade mark for certain goods. The provisions the IPL does not provide that such an issue could be resolved by the order in the proceedings, i.e. before the adoption of a decision of the Polish Patent Office on the termination of the proceedings regarding THERMO SHIELD Z-223847 trade mark application. This is a substantive matter and a conclusion can be taken only in the decision of the PPO issued in proceedings involving all the people who made the trade mark application as partners of the civil partnership.