Archive for: Art. 129(1)(ii) IPL

Trade mark law, case II GSK 371/14

April 10th, 2015, Tomasz Rychlicki

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

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

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

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

Categories: acquired distinctiveness | Art. 129(1)(ii) IPL | Art. 129(2)(i) IPL | Art. 130 IPL | non-traditional trade marks | Polish Act on Industrial Property Law | Polish courts | Polish institutions | Polish law | Polish Patent Office | Polish Supreme Administrative Court | single colour | trade mark examination | trade mark refusal | trademark law | Voivodeship Administrative Court.

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.

Categories: 3D trade mark | Art. 129(1)(ii) IPL | Art. 129(2)(i) IPL | Art. 131(2)(i) IPL | Art. 256 IPL | non-traditional trade marks | Polish Act on Industrial Property Law | Polish courts | Polish institutions | Polish law | Polish Patent Office | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 2032/11

January 7th, 2013, Tomasz Rychlicki

On 17 August 2009, EMPIK CAFE sp. z o.o. applied to the Polish Patent Office for the right of protection for the word trade mark Lody prawdziwie domowe Z-359478 for goods and services in Classes 29, 30, 35 and 43. “Lody prawdziwie domowe” means real homemade ice cream. The PPO decided that the sign lacks distinctiveness because in terms of semantic, the combination of three words does not create the concept that would be distant from content directly read from the statement, and refused to grant the right of protection. This nominal phrase is a carrier of advertising message, referring to the characteristics of the goods and has no features that would suggest that it is more than a slogan, that is a trade mark. Monopolization of such a non-distinctive designation by one entrepreneur, which is the carrier of information and used in advertising, would violate the principle of freedom of economic activity and fair competition. EMPIK CAFE filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 23 April 2012 case file VI SA/Wa 2032/11 dismissed it. The Court held that the essential function of a trade mark, which follows from its very definition, is to distinguish the goods of one undertaking from those of other undertakings, and ruled that the advertising nature of a trade mark does not eliminate its recognition as a distinctive or nondistinctive sign. The Court repeated that rights of protection should not be granted for signs which are devoid of sufficient distinctive character, especially, signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods. Descriptive signs may be one of the components of a trade mark, such as a specific binding word or symbol indicating a characteristic of the goods. Both, the legal commentators and the case law of administrative courts say the descriptive trade mark is a sign that has the characteristics of actual, specific and direct descriptiveness. The actuality of signs is examined objectively and leads to determining whether from the point of view of current market conditions such indication is useful for the description of the goods, and as such, it should be available for all participants. The rule of specific descriptiveness indicates that a sign is excluded from the registration as a descriptive only if it points to the specific characteristics of the goods, for which the trade mark is intended. The direct description occurs when a descriptive mark provides information about the characteristics of the particular goods directly, clearly and unambiguously, so that it may be well to read directly, and not by the way of connotations. Then a trade mark is assessed as a whole, and not only through the prism of one element – a descriptive word, but other accompanying elements. After all, not every slogan has to be registered. Of course, there is no normative definition of distinctiveness. Distinctiveness of a slogan serving as a trade mark must be sufficient. This means that in the minds of consumers the sign will be able to identify the origin of the product or service with an entrepreneur. It is therefore only possible if such belief collapse in the minds of consumers that the goods or services are produced under the control of a given company, and with its consent. This is the only way such a slogan as a trade mark will be recognizable, yet can serve as a valuable business asset.

Categories: Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 131(1)(iii) IPL | descriptive character | distinctive character | Polish Act on Industrial Property Law | Polish courts | trade mark refusal | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 1806/11

August 3rd, 2012, Tomasz Rychlicki

The Polish entrepreneur IT5.PL Anna Sasin applied to the Polish Patent Office for the right of protection for the word trade mark PsychoDietetyka Z-325335 for services in classes 35, 38, 39, 41, 42, 43 and 44. The PPO refused and decided that the combination of two words (English: Psycho and Dietetics) lacks distinctiveness and is descriptive for the applied services. The PPO ruled that the etymology of these two words is well known and easy to verify in publicly available dictionaries, or search engines. Psychodietetyka is the name of a program dealing with the causes of eating disorders and diseases associated with poor nutrition (including diabetes, obesity, anorexia, bulimia), that also indicates psychological factors in eating disorders, such as lack of motivation to fight obesity and overweight, emotional sphere, impaired perception of self, relationships with family, problems with identity formation. The PPO noted that if someone type the phrase psychodietetyka, many search results of that word appear in the web browser. IT5.PL filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 15 February 2012 case file VI SA/Wa 1806/11 dismissed it and noted that the combination of words lies in their simple fusion into one word, without giving them any unusual form of graphic or semantic, so that they could be deemed as distinctive for the marked goods. It did not matter that the applied sign was not present in a dictionary, because it is not a measure of distinctiveness of signs. The Court noted also that the Polish and European case-law presents both liberal and rigorous views on examination of descriptiveness of trade marks. However, the principle of individual assessment of each sign is consistent in the legal doctrine and jurisprudence. This judgment is final.

Categories: Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | descriptive character | distinctive character | Polish Act on Industrial Property Law | trade mark refusal | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 72/11

February 29th, 2012, Tomasz Rychlicki

On 25 May 2006, the Polish company AERECO Wentylacja Sp. z o.o. applied for the word-figurative trade mark HIGROSTEROWANIE Z-311192 for goods in Classes 07, 09, 11 and 35. The Polish Patent Office refused to grant the right of protection, claiming that the applied sign does not have sufficient level of distinctive character. The PPO pointed out this trade mark is built from the core “sterowanie” (in English: controling/steering) and the prefix higro (English: hygro) which indicates a semantic link to the humidity. The sign that is created from these two elements, although not listed in dictionaries, is not a fanciful term and simply means “to regulate humidity”.

Z-311192

AERECO filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 8 September 2010 case file VI SA/Wa 1117/10 dismissed it, and ruled that both in the legal commentaries and the case law of administrative courts, it is considered in particular, that the descriptive sign is one that has the characteristics of the topical, concrete and direct descriptiveness. The topicality of the signs should be assessed on the objective basis and consist of examining whether from the perspective of current market conditions, a sign is useful for description of the goods and if as such it should be accessible to all participants. The rule of concrete descriptiveness states that a sign which indicates the specific characteristics of the product for which the designation is intended may be exempted from the registration as descriptive one. The direct descriptiveness occurs when a descriptive sign informs directly, clearly and unambiguously about the characteristics of a particular goods, so that characteristics may be interpreted directly, and not by associations.

The Court shared the position of the PPO, that the the questioned sign simply means “controling humidity” and thus explicitly indicates the characteristics of the designated goods and can not be appropriated to describe the products or services of one company. The VAC did not find anything fanciful in the figurative element of the HIGROSTEROWANIE trade mark. ARECO filed a cassation complaint but it was dismissed by the Supreme Administrative Court in its judgment of 29 February 2012 case file II GSK 72/11.

Categories: Art. 107 §1 APC | Art. 107 §3 APC | Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 130 IPL | Art. 7 APC | Art. 77 APC | Art. 80 APC | distinctive character | Polish Act on Industrial Property Law | Polish Administrative Proceedings Code | trade mark examination | trade mark refusal | Voivodeship Administrative Court.

Trade mark law, case II GSK 1033/10

February 22nd, 2012, Tomasz Rychlicki

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

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

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

Categories: absolute grounds for refusal | acquired distinctiveness | Art. 107 §3 APC | Art. 129(1)(ii) IPL | Art. 130 IPL | Art. 7 APC | Art. 77 APC | Art. 8 APC | Art. 80 APC | descriptive character | distinctive character | generic sign | personal rights or interests | Polish Act on Industrial Property Law | Polish Administrative Proceedings Code | Polish courts | Polish law | Polish Patent Office | Polish Supreme Administrative Court | press title | secondary meaning | trade mark examination | trade mark refusal | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 1346/10

December 13th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for the trade mark BIO-ACTIVE R-169823, in part for goods in Class 3, i.e. body care cosmetics. The owner BIO-ACTIVE DYSTRYBUCJA Sp. z o.o. filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 19 April 2010 case file VI SA/Wa 109/10 upheld the questioned decision and ruled that a trade mark consisting exclusively of informational signs that are normally used to designate the type of goods or services, even if those signs are in a language other than Polish, is not registrable. The Court also noted that the disputed trade mark is the so-called “internationalism”, that is a sign, which is present in other languages in almost identical form. In different languages it has the same meaning, construction reading and tone. As a result of the granting of the right of protection to the trade mark in question, all cosmetics producers except the owner were deprived of the opportunity to introduce to the market of all products bearing the term containing given information, and consumers could not be adequately informed about the characteristics of these products.

BIO-ACTIVE DYSTRYBUCJA Sp. z o.o. filed a cassation complaint. The Supreme Administrative Court in its judgment of 9 December 2011 case file II GSK 1346/10 dismissed it. The SAC ruled that widespread availability of descriptive signs and indications is in the public interest.

Categories: Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 129(2)(iii) IPL | Art. 246 IPL | Art. 77 APC | Art. 80 APC | distinctive character | generic sign | Polish Administrative Proceedings Code | trade mark invalidation | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 1291/11

November 23rd, 2011, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark LAW24.pl applied for the Polish law firm Komarnicka Korpalski Kancelaria Prawna sp.j for services in Class 35 such as advising on business and business management consultancy, in Class 36 such as financial consultancy and financial and accounting activity, and in Class 42 such as legal services.

Z-341137

The PPO pointed out that the sign was applied for broadly defined legal services, and it cannot be registered because it lacks sufficient distinctive character, therefore it cannot be the subject of exclusive rights as others would have been deprived of the possibility to use it. The PPO noted that the applied trade mark is a company name, but there are different regulations regarding company names and the names of individuals. The PPO ruled that the right to the company name is not absolute, effective in relation to all (erga omnes). The PPO stated that the case of each applied trade mark is always considered individually on its specific conditions, so the argument that there is plenty of registered trade marks that include the word “law”, and the PPO should also grant the right of protection in this case, was rejected The PPO did not agree with the argument that recent visits to the website could prove that the trade mark in question has acquired secondary meaning. According to the PPO, the applicant has not submitted any evidence documents to confirm it. Komarnicka Korpalski Kancelaria Prawna filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 31 August 2011 case file VI SA/Wa 1291/11 dismissed it. The Court agreed with the PPO and held that Internet address identifies a legal or natural person, but this identification is not equivalent, that the services provided by such person are marked with the same deisgnation.

Categories: absolute grounds for refusal | acquired distinctiveness | Art. 129(1)(ii) IPL | Art. 129(2)(i) IPL | Art. 129(2)(ii) IPL | Art. 151 PBAC | descriptive character | distinctive character | domain names | e-law issues | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | Polish TLDs | trade mark refusal | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 562/11

November 4th, 2011, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word trade mark flex fuga Z-297616 applied for by MAPEI POLSKA Sp. z o.o. for goods in Class 1 such as adhesives based on plastics and resins, silicone mortars, for goods in Class 6 such as decorative moldings, profiles, metal profiles, and for goods in Class 19 such as decorative moldings, profiles, profiles not made of metal, masonry mortars, dry plaster, mortars for grouting and welding.

The PPO decided that this trade mark is devoid of sufficient distinctive character and it lacks any additional elements, such as verbal or graphic, which would allow potential purchasers to identify the goods with the source of the origin of goods. The PPO noted that a fuga is a weld/joint between adjacent wall elements and flex means flexible in English.

MAPEI filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in Warsaw in its judgment of 26 August 2009 case file VI SA/WA 1017/09. MAPEI decided to file a cassation complaint. The Supreme Administrative Court in its judgment of 13 January 2011 case file II GSK 19/10 overturned the judgment of the VAC and held that the VAC relied on the erroneous assumption that the buyers (users) of goods bearing the trademark at issue are those who know English or use the Internet every day, which was not supported by any evidence. Besides, the trade mark flex fuga was applied for not only various types of mortars but also for various types of decorative moldings, profiles, sections of metal and non-metallic, and in relation to those goods it is difficult, to talk about “cut or bent” joint or weld.

The case went back to the Voivodeship Administrative Court. The VAC in its judgment of 9 May 2011 case file VI SA/Wa 562/11 held that the fact that the Polish Patent Office has granted the rights of protection for a number of trade marks containing the word “flex” or the word “flex” in combination with other words, should prompt the PPO to a broader examination of the merits of the MAPEI’s trade mark application. Thus, the PPO’s view that even if MAPEI relied on other decisions issued by the Polish Patent Office, it could not affect the assessment of the submitted application and its final examination, is not justified. The VAC noted that the PPO could change its position on the regularity of the grant of rights of protection, in which one element was the word “flex”, but it should justify such change in detail. The case law of the PPO may therefore be subject to change, if the authority demonstrates that there are reasonable grounds. However, any unfounded inconstancy of the opinion of the public body constitutes an infringement of the administrative procedure, because it may result in undermining citizens’ trust in state bodies and adversely affect the legal culture of citizens, and thereby cause a breach of the constitutional rule that all persons shall be equal before the law and all persons shall have the right to equal treatment by public authorities.

Categories: absolute grounds for refusal | Art. 107 §3 APC | Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 130 IPL | Art. 32 Constitution | Art. 7 APC | Art. 77 APC | Art. 80 APC | generic sign | Polish Act on Industrial Property Law | Polish Administrative Proceedings Code | Polish Constitution | Polish Patent Office | trade mark refusal | trademark law | Voivodeship Administrative Court.

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.

Categories: absolute grounds for refusal | Art. 107 §1 APC | Art. 120(1) IPL | Art. 120(2) IPL | Art. 129(1)(ii) IPL | Art. 129(2)(i) IPL | Art. 133 §1 PBAC | Art. 141 §4 PBAC | Art. 151 PBAC | Art. 174 PBAC | Art. 3(1)(b) Directive 89/104 | Art. 5(2) Madrid Agreement | Art. 6quinquies Paris Convention | Art. 7 APC | Art. 77 APC | Art. 8 APC | Art. 80 APC | Directive 89/104/EEC | distinctive character | International law | non-traditional trade marks | Paris Convention | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | Polish Administrative Proceedings Code | Polish Supreme Administrative Court | single colour | trade mark refusal | trademark law.

Trade mark law, case VI SA/Wa 86/11

May 10th, 2011, Tomasz Rychlicki

The Polish Patent Office dismissed the request for the invalidation of the word trade mark Laurina R-186513 registered in Class 31 for goods such as seeds of dwarf yellow pod common bean, fresh dwarf bean, yellow pod bean. The applicant filed a complaint against this decision.

The applicant argued that the mark does not have sufficient distinctive characteristic because it is the name of common bean varieties that was entered into the national registry in Poland. The names of plant varieties are used to distinguish plant, and not their origin from specific growers or producers. The more important argument was that new names of plant varieties can be protected for cultivators only under the provisions of the Act on the Legal Protection of Plant Varieties -LPPV – (in Polish: ustawa o ochronie prawnej odmian roślin) of 26 June 2003, published in Journal of Laws (Dziennik Ustaw) No. 137 item. 1300 with subsequent amendments. The present variety is not subject to such protection and seeds marked with Laurina are marketed by many manufacturers, and following all the procedures provided for in the LPPV.

The Voivodeship Administrative Court in Warsaw in its judgment of 8 April 2011 case file VI SA/Wa 86/11 annulled the contested decision and held it unenforceable. The Court ruled that the distinctiveness of word trade marks should be assessed primarily in relation to specific goods that will be bearing such a sign. Informational or descriptive nature of a sign is a feature that demonstrates a lack of concrete, not abstract distinctiveness of a trade mark. The assessment should be made also in relation to the so-called “ordinary course of business/trade”, taking into account the views of the criterion of the average consumer.

Categories: Art. 129(1)(ii) IPL | Art. 131(2)(i) IPL | bad faith | descriptive character | distinctive character | Polish Act on Industrial Property Law | trade mark invalidation | trademark law | Voivodeship Administrative Court.

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.

Categories: Art. 107 §3 APC | Art. 120(1) IPL | Art. 120(2) IPL | Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 151 PBAC | Art. 7 APC | Art. 77 APC | Art. 80 APC | descriptive character | distinctive character | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | Polish Administrative Proceedings Code | trade mark refusal | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 1056/10

January 18th, 2011, Tomasz Rychlicki

This case concerned the opposition proceedings against the decision on grant of the right of protection for NATURTEA R-191045 trade mark, owned by the Polish company ZAS-POL Sp. z o.o., and registered for goods in Class 30 such as tea, fruit teas, black, green, red, flavored tea. The opponent argued that NATURTEA is not sufficiently distinctive, because it is a descriptive term that indicates only the type of product – tea. The Polish Patent Office dismissed the case and ruled that such a trade mark, as a combination of two words is a fanciful sign and does not indicate characteristics of the marked goods. The opponent decided to file a complaint against this decision. According to ZAS-POL, the law firm that was the applicant in this case, had no legal interest (locus standi) in the invalidation of the right protection.

The Voivodeship Administrative Court in its judgment of 30 September 2010 case file VI SA/Wa 1056/10 annulled the questioned decision and set the case back for reconsideration. The Court ruled that the PPO completely ignored evidence submitted by the opponent as to the existence of the term “natural tea” in the market, and in fact, the PPO relied solely on the arguments provided by the trade mark owner. It was an example of violation of the principle that requires the public administration body to comprehensively collect and examine all evidential material.

The VAC reminded also that legal interest is not required to be proven only in case of oppositions filed according to Article 246 of the Polish Industry Property Law, where any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right in registration, but only within six months from the publication in “Wiadomości Urzędu Patentowego” (the official journal of the Polish Patent Office) of the mention of the grant of a title of protection, and justifying at the same time the existence of the circumstances causing the invalidation of such right. The Court noted that it is the only example of the so-called actio popularis – a legal remedy that was introduced to the Polish Industrial Property Law because of the importance of public interest. This action is available to any person with the capacity to be a party in the administrative proceedings, even if such person is not directly interested in the matter. This judgment is not final yet.

Categories: Art. 107 §3 APC | Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 246 IPL | Art. 256 IPL | Art. 7 APC | Art. 77 APC | Art. 8 APC | Art. 80 APC | legal interest | Polish Act on Industrial Property Law | Polish Administrative Proceedings Code | trade mark opposition | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 903/09

January 5th, 2011, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 16 November 2010 case file II GSK 903/09 held that the whole evidence material that was gathered in the file on the grant of the right of protection for a trademark is an integral part of the evidence concerning the invalidation proceedings that was initiated as a result of a notice of opposition to a final decision of the Patent Office on the grant of a right of protection.

Categories: Art. 107 §3 APC | Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 131(1)(ii) IPL | Art. 145 PBAC | Art. 174 PBAC | Art. 256 IPL | Art. 7 APC | Art. 77 APC | Art. 80 APC | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | Polish Administrative Proceedings Code | Polish Supreme Administrative Court.

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.

Categories: absolute grounds for refusal | Art. 120(1) IPL | Art. 129(1)(ii) IPL | Art. 129(2)(i) IPL | Art. 129(2)(ii) IPL | Art. 132(3) IPL | Art. 156 IPL | distinctive character | trade mark examination | trade mark refusal | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 691/09

October 5th, 2010, Tomasz Rychlicki

On 14 October 2002, the Polish company BWS Polska Sp. z o.o. based in Zaczernie applied for the right of protection for VARNA Z-256235 trademark for goods in Class 33 such as wines. The Polish Patent Office informed the applicant that it cannot be granted a right of protection because VARNA is also a geographical name of the Bulgarian city of Varna, which is located in the eastern Black Sea region famous for producing high quality white wines. Due to the fact that the seat of the applicant is located on Polish territory, the sign may lead the potential buyers to confusion as to the origin of goods. In response, BWS noted that the sign does not contain any false information, while simultaneously indicating that it is an importer and distributor of wines from south-eastern Europe, including Bulgaria.

The PPO received also comments issued by BSG Poland Sp. z o. o. in which the company raised objection of lack of statutory requirements for the protection of the questioned trade mark. Comments were sent to BWS but the company has not agreed to these statements.

The Polish Patent Office refused to grant a right of protection. The PPO ruled that VARNA sign is information on the place of the origin of wine – the site of a wine-growing and processing, without informing the consumer about anything else. According to the PPO, the importer has the right to register its trade mark, but the choice that violates the rights of manufacturers who conduct business in the region of Varna – infringes on the principles of merchant’s honesty. A situation in which the Bulgarian wine producers could not provide the Polish consumer that the wine has been produced by them is not fair, because they were outrun by an entity whose relationship with Bulgaria is at least questionable.

BWS requested the retrial of its case. The company reduced the original list of goods to wines from Bulgaria. It argued also that, under a contract with the Bulgarian multi-vendor, which is located in Varna, it has exclusive rights to sell original bottled VARNA wine. BWS indicated that the packaging of imported wine, includes bottle shape and color and shape, color, composition and location of the graphic label and it is its own creation. The company pointed out that the Trade Mark Register includs other signs being the name of national and international cities, towns, and in its opinion, the registration of VARNA trade mark will not be the monopolization of the word, because the Varna city remains a geographical name, the name of the appellation of origin or possibly the name of the seat of the suppliers of wine.

After reconsidering the matter, the Polish Patent Office upheld the contested decision. The PPO withdrew from contesting the trade as contrary to good merchant’s practice and public policy, pointing out also that the limited list of goods also been removed as an obstacle to the misleading nature of the sign. However, the PPO ruled that VARNA is the word trade mark, with no graphics, and indicates the origin of goods, therefore, it cannot be registered. The average consumer will read the sign as the Bulgarian city or geographic region on the Black Sea, famous for making wines. BWS filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 18 March 2009 case file VI SA/Wa 2098/08 held that the contested decision is the right. According to the Court the basic prerequisite for the grant of the right of protection is the distinctive character of a sign. The legal doctrine distinguishes between the so-called abstract distinctive ability and the concrete distinctive ability. The mark is characterized by the abstract distinctive ability, where a sign is examined abstractly (in isolation from the specific goods or services) capable of distinguishing the goods of one undertaking from those of another. The mark has concrete distinctive character when it is capable of distinguishing goods or services specified in the application to the Patent Office of goods or services of another company.

BWS filed a cassation complaint. The Supreme Administrative Court in its judgment of 13 July 2010 case file II GSK 691/09 reversed the contested judgment and refered the case back for reconsideration. The SAC held that the VAC overlooked in its deliberations, the fact that the disputed word mark VARNA is not present in the Polish language as the name of the city in Bulgaria. This spelling of the city name does not occur in Bulgarian either (it’s Варна). However, in Polish language the city is known as Warna. Meanwhile the VAC in assessing the facts of the case stated that it was undisputed that the sign is the name of the VARNA city in Bulgaria and that by placing it on the goods (wines originating from Bulgaria) it will indicate the relevant public without difficulty and without no additional actions the origin goods. The Court had the duty to assess the legality of the contested decision of the Polish Patent Office even if the allegation was not raised in the complaint. The law requires that the assessment whether the mark is sufficiently distinctive has to be made individually for each sign. The VAC should also examine the issue whether a questioned sign due to the use of the first letter “V” and not “W” (as is correctly spelled in Polish) has sufficient distinctiveness, although phonetically the “V” and “W” letters sound the same in the Polish language. Of those grounds the SAC held that the VAC has not made an overall assessment of distinctive character of the sign in question, taking into account its visual, aural or conceptual elements, and therefore the VAC infringed on Article 113 §1 and Article 145 §1 point 1 C of the Polish Act on Proceedings before Administrative Courts, since it dismissed the case without adequate explanation of the matter. The SAC noted also that the BWS claimed that, under the earlier decisions of the PPO, it acquired rights of protection for trademarks, even though they were the names of cities (Melnik – a city in Bulgaria), Calama (a city in Chile), or Beverly Hills (a city in California), however, the VAC did not respond to such arguments. In light of the settled case-law of the Supreme Administrative Court, the administration body can change its opinion on the content of the right conclusion, which should be issued in a specific type of cases, but it must carefully justify such a change, especially when changing the view of decisions taken in relation to the same applicant. The case-law of the administration may therefore be subject to change, if the authority demonstrates that there are reasonable grounds.

Categories: Art. 129(1)(ii) IPL | Art. 130 IPL | Art. 145 PBAC | Art. 174 PBAC | distinctive character | geographical name as trade mark | Polish Supreme Administrative Court | product packaging | trade mark examination.

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 Z-294822, Pieczątka 3 Z-294821, and Pieczątka 4 Z-294823 trade marks 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 subsequent 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.

Categories: absolute grounds for refusal | Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 130 IPL | Art. 145 IPL | Art. 7 APC | Art. 77 APC | distinctive character | Polish Act on Industrial Property Law | Polish Administrative Proceedings Code | Polish Supreme Administrative Court | trade mark refusal | trademark law.

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 the trade mark “100 panoramicznych” Z-241510 (in English: 100 panoramic) applied for goods in class 16 such as brochures, books, journals, magazines, titles of magazines. The PPO held that this trade mark is not sufficiently distinctive 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 (acquired distinctiveness) 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 annulled the PPO’s decision and ruled as unenforceable.

Categories: acquired distinctiveness | Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 145 IPL | Polish Act on Industrial Property Law | secondary meaning | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 274/10

June 1st, 2010, Tomasz Rychlicki

On 14 March 2005, the Polish company PMB S.A. from Białystok applied for “dębowa mocno wędzona” (oak heavily smoked) trade mark Z-292377, for goods in class 29 such as meats, smoked products and offal products.

The Polish Patent Office denied to grant a right of protection and PMB filed a complaint to the administrative court. The Voivodeship Administrative Court in Warsaw in a judgment of 14 April 2010, case file VI SA/Wa 274/10, rejected the complaint. According to the Court, in this case, the PPO correctly held that PMB has not shown that the sign has acquired distinctiveness. As it was clear from case files, the only evidence provided by PMB was statements of sales of products marked with the questioned sign as of January 2005. The issue of acquisition of secondary meaning (acquired distinctiveness) is taken into account together with all the circumstances of the presence of a sign on the market, including such as: market share, the intensity, geographical extent, duration of the use of a trade mark, investments in advertising, the percentage of a relevant group of customers who recognize the sign as an indication of origin from a particular entrepreneur, etc. Such evidences must come prior to the date of filing of a trademark application with the Polish Patent Office. The Court commented on the Community case law in which the evidence of secondary meaning is also allowed from the period after the date of trade mark application, if they show that acquired distinctiveness already existed at that date.

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

Categories: acquired distinctiveness | Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 130 IPL | case law | distinctive character | secondary meaning | Voivodeship Administrative Court.

Trade mark law, case II GSK 214/09

March 3rd, 2010, Tomasz Rychlicki

This is a continuation of the story described in a post entitled “Trade mark law, VI SA/Wa 1000/08“. Les Laboratoires Servier from France filed a cassation complaint. The Supreme Administrative Court in a judgment of 16 December 2009, case file II GSK 214/09, ruled that the sign GLAZIDE is representing a creative transformation of the name of an active ingredient (AI) called gliclazidium (gliclazide) that was proposed by the WHO. GLAZIDE has the distinctive character because it is a fanciful sign and it does not constitute either a name of a generic product, or the International Nonproprietary Name of the active substance of the Latin Gliclazidum (English: Gliklazide, Polish: Gliklazyd), nor does it directly inform about the characteristics (properties) of goods. Therefore, the SAC rejected the complaint.

Categories: Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | distinctive character | generic sign | medicinal product | Polish Act on Industrial Property Law | Polish Supreme Administrative Court | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 1144/08

October 17th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 25 September 2008 case file VI SA/Wa 1144/08, published in LEX under the no. 513878, held that the descriptiveness of a trade mark is the sole and direct information which indicates the characteristic of the goods. The signs are not deemed as descriptive if in only through indirect conclusion can be considered as a determination of such features. This case concerned the examinations proceedings of the trade mark telepizzeria Z-284471 that was applied for by the Polish company BONO A. MAZUREK Spółka Jawna for goods and services in Classes 29, 30, 31, 32, 35 and 43.

Categories: Art. 129(1)(ii) IPL | Art. 145 PBAC | Art. 244 IPL | Art. 7 APC | Art. 77 APC | descriptive character | distinctive character | trade mark examination | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 1655/08

August 27th, 2009, Tomasz Rychlicki

On 7 February 2003, Browar Belgia Sp. z o.o. from Kielce applied to register the word trade mark GINGERS Z-260753 for goods such as beer, beer-based drinks, juices, syrups, essences for making beverages, soft drinks, preparations for the production and manufacture of beverages, extracts and extracts of hop in class 32.

In a letter dated 14 May 2004, the Polish Patent Office informed the applicant that there was an obstacle to granting the right of protection for GINGERS mark, since it is an informative sign which has insufficient distinctive character to enable it to distinguish the products of one undertaking from other companies, under normal market conditions.

In its letter of 14 June 2004 Browar Belgia argued that, contrary to the assertion of the PPO, the name “gingers” associated with the list of goods covered by the application is not a generic term and does not perform only an informative function. Browar Belgia noted that the word “gingers” has multiple meanings in English language and can be understood as, inter alia, the colour red/red-headed and also as verve, the zest or liveness, and the word “ginger” is just one of many translations into Polish. The name GINGERS should also be regarded as fanciful because it has the “s” letter placed at the end of a word, while the noun “GINGER” is singular. Moreover, it is unreasonable to say that all consumers of beer and soft drinks in Poland speak fluent English and will associate English word with its counterpart in the Polish language, ie ginger.

In a letter of 17 October 2005, the PPO expressed the view based on articles 129(1)(ii), article 129(2)(i) and (ii) and article 131(1)(iii) 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.

1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

Article 129(2)(i) and (ii)
2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(i) signs which are not capable of distinguishing, in trade, the goods for which they have been applied,
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods,

Article 131(1)(iii)
1. Rights of protection shall not be granted for signs:
(iii) which, as for their nature, may mislead the public, in particular as to the nature, properties of the goods or, with regard to paragraph (3), as to the geographic origin thereof,

The PPO noted that the mark applied for cannot be granted a right of protection due to the fact that the sign is informative for the majority of goods in class 32 and as for extracts and extracts of hops; it is a sign that it may mislead the public as to the nature or characteristics of these goods. In its decision of 28 February 2007, the Polish Patent Office refused to grant the right of protection for the word trade mark GINGERS. The PPO noted that granting the right of protection for GINGERS word trade mark in favor of one entrepreneur would limit freedom of business activity of other market participants in the process of producing and marketing of these goods and thus hamper the business activities of other entities.

In a letter dated 11 May 2007, Browar Belgia requested a retrial, calling for the reversal of the contested decision. According to Browar Belgia, granting the right of protection for GINGERS trade mark would not limit anyone from the possibility of providing, for example, the composition of beer on the label in place designated for that purpose, but this does not mean that the composition of beer, to be specific the content of the component, is a passport to putting GINGERS into other trade marks. It was an unacceptable situation in which another party would benefit from the reputation of the trade Gingers, that was promoted by a very expensive advertising campaign. In the meantime, Browar Belgia transferred the right to trade mark application GINGERS Z-260753 to Kompania Piwowarska S.A. from Poznań. In a decision of 30 May 2008, the PPO upheld in entirety its previous decision of 2007. Browar Belgia filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw and Kompania Piwowarska joined the case.

The VAC in its judgment of 17 February 2009, case file VI SA/Wa 1655/08 dismissed the complaint and ruled that the principle of free access for all traders to signs that serve to communicate information about the nature of goods, their characteristics or properties does not allow for their monopolization by a single market participant.

Categories: Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 131(1)(iii) IPL | generic sign | Polish Act on Industrial Property Law | Polish courts | Polish law | Polish Patent Office | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 905/08

July 28th, 2009, Tomasz Rychlicki

On June 2006, the Polish Patent Office refused to grant the right of protection for a 3D trade mark Z-255004, that was applied for in September 2002 by Polish company “BARTEX – Bartol” Spólka jawna from Paproc. The reason was that the applied sign was similar to 3D trade mark IR-676508, registered under the Madrid Agreement with a priority of April 1997 for Bacardi & Company Limited for goods in class 33, such as alcoholic beverages.

Z-255004

In October 2007, after re-hearing the case, the PPO upheld its decision of June 2006 on the grounds that the assessment of similarity between both signs should be based on the overall impression both marks have on the consumer.

According to the PPO the distinguishing strength of the disputed signs should be taken into account, including its distinctive and dominant components. As usual, both trade marks should be compared in three aspects: visual, aural and conceptual. The PPO deemed both marks as “weak trade marks”. However, the PPO also noted that the 3D trade mark owned by Baccardi posses some features that are not common and are not reproduced in other 3D forms of bottles. The most distinctive element is the characteristic cut on both sides of the bottle. Along with all the rest it gives a unique shape to the bottle. Thus, in the assessment made by the PPO, the earlier trade mark as a whole had the distinctive character which allowed the PPO to issue a positive decision on the recognition on the territory of the Republic of Poland of the protection for the international trademark.

IR-676508

While deciding on the application made by the Polish Company, the PPO came to the conclusion that the differences between disputed trade marks are not so noticeable and the risk of confusion by the average consumer of such goods is significant.

As regards the Polish company’s argument that it should be taken into account the fact that alcohol is almost always sold in the bottle that has a label, the PPO said that it is possible to imagine a situation that the applied trade mark will have in the future a label which is an imitation of an earlier trade mark. The Polish Patent Ooffice pointed out that, if looked at the specific conditions of trade it should take into account the way in which the applicant puts its goods on the market. Some information regarding this issue were presented in the observations filed by Bacardi on 26 August 2003 as to the existence of grounds that may cause a right of protection to be denied in connection with the application Z-255004. These materials proved that the Polish company markets products that are the imitation of alcohol produced Baccardi.

BARTEX – Bartol filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in its judgment of 28 April 2008, case file VI SA/Wa 126/08 ruled that while deciding whether the right of protection may be granted it must be determined whether a sign may serve as a trade mark at all. Only after having determined that a sign may be a trade mark it shall be examined whether such sign has sufficiently distinctive characteristics, to check out whether a sign is capable to distinguish on the market the specific goods for which it was applied for.

The VAC based its holding on article 129(1)(ii) 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.

Article 129
1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

The lack of distinctive character is an absolute obstacle to trade mark registration, however, characters devoid of this charateristics can acquire it as a result of use. The distinctive character of a trade mark is fitted with such features, which in the minds of consumers it clearly indicate that the goods identified by it come from the specific company. The court cited doctrinal approach to the distinctiveness of a trade mark (a book by professor Urszula Prominska entitled Prawo wlasnosci przemyslowej published by Difin, Warszawa 2005, edt. II, p. 211). The assessment of a distinctive character is the result of two quite different elements. On the one hand, the way/form a trade mark is presented must be “itself” so distinctive that it can identify the goods. On the other hand, it must provide the consumer with a possibility to choose goods based on that way/form without the necessity of determining the origin of goods indirectly (eg. when the consumer is forced to look at the product manufacturer’s name). In examining signs that cannot distinguish the goods, it should be noted that such sign does not posses any characteristics in its tructure thus such sign as a whole is devoid of a sufficient distinctive characteristics and it is not suitable for the identification of goods, and therefore is does not have the ability to distinguish its origin. This is a category of signs that emerged of its structural features (such as a form which is the representation of the product, its generic name, etc.). The court rejected the complaint.

The cassation complaint was rejected in the judgment of the Supreme Administrative Court of 13 May 2009, case file II GSK 905/08.

Categories: Art. 129(1)(ii) IPL | case law | distinctive character | non-traditional trade marks | Polish Act on Industrial Property Law | Polish Supreme Administrative Court | secondary meaning | trademark law | Voivodeship Administrative Court.

Trade mark law, VI SA/Wa 1000/08

February 5th, 2009, Tomasz Rychlicki

In the decision of 4 February 2005, the Polish Patent Office granted the right of protection for the word trade mark Glazide in class 5 for goods such as anti-diabetic pharmaceutical preparations, for Farmaceutyczna Spółdzielnia Prac Galena from Wrocław.

Les Laboratoires Servier from France filed a request for invalidation of the right of protection based on articles 129(1)(ii) and 129(2)(ii) 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.

Article 129(1)(ii)
1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

Article 129(2)(ii)
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods.

The French company claimed that the mark Glazide could not distinguish the goods for which it was registered. The mark itself presents information about the treatment of diabetes. The active ingredient (AI) in these kinds of medicine is the substance called gliclazidium (gliclazide). However, the PPO dismissed the request and the French company filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 31 October 2008 case file VI SA/Wa 1000/08 dismissed it. That court held that the disputed mark may lead its recipients (doctors, pharmacists) to make some association with the AI, but it does not mean that it lacks the distinctive character. The sign differs from the AI in phonetic and visual aspects. According to the Court, the Glazide trade mark is fanciful and does not describe a type of drug. The VAC ruled that article 129(2)(ii) clearly states that only signs that are made exclusively of the elements that describe the nature or origin of goods lack distinctive character.

The judgment is not yet final. The cassation complaint was filed before the Supreme Administrative Court. See “Trade mark law, case II GSK 214/09“.

Categories: absolute grounds for refusal | acquired distinctiveness | Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | distinctive character | generic sign | Polish Act on Industrial Property Law | Polish courts | Polish law | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 1620/08

January 22nd, 2009, Tomasz Rychlicki

On 22 January 2003, the Spanish company Aceites del Sur-Soosur S.A. applied to the Polish Patent Office to register the word trade mark LA ESPANOLA Z-260063 in class 29 for goods such as edible oils and fats. The PPO rejected this trade mark application, justifying its decision case file DT-51/08 on the basis of Article 129(1)(ii) and Article 129(2)(ii) 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.

1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character

Article 129(2)(ii)
2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods.

The representative of the Spanish company claimed that Aceites del Sur-Soosur had a long tradition in the production of such goods and is well-known in many countries, and that there is also a CTM registration for the word-figurative trade mark LA ESPANOLA CTM no. 000132092, however, the PPO found that the sign indicated the word origin of goods from Spain. In its original language it means “the Spanish” or “Spain”. And in PPO’s opinion Spain is also famous for production of goods of this type, such as oils.

Aceites del Sur-Soosur filed a complaint before the Voivodeship Administrative Court in Warsaw but the VAC in its judgment of 18 November 2008, case file VI SA/Wa 1620/08 fully agreed with the Polish Patent Office and stressed the fact that such sign, while presented without any graphic element, has purely-for-information status, which points to the place of origin of goods imported from Spain.

Categories: absolute grounds for refusal | Art. 129(1)(ii) IPL | Art. 129(2)(i) IPL | descriptive character | distinctive character | Polish Act on Industrial Property Law | Polish law | Polish Patent Office | trade mark refusal | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 262/08

June 17th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 30 April 2008 case file VI SA/Wa 262/08, published in LEX under the no. 512901, held that the interests of all market participants must also taken into account when examining the registrability of a trade mark. The grant of the right of protection for a trade mark cannot lead for the monopolization by one entrepreneur of signs that are in the public domain. This case concerned the examination proceedings of the word trade mark polbar Z-278236 that was applied for by Akademia Rolnicza from Lublin. The word “polbar” is used as the name of the hens’ breed.

Categories: Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 151 PBAC | descriptive character | trade mark examination | Voivodeship Administrative Court.

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.

Categories: Art. 120(1) IPL | Art. 120(2) IPL | Art. 129(1)(ii) IPL | Art. 296(1) IPL | Art. 296(2)(ii) IPL | descriptive character | distinctive character | Polish Supreme Court.

Trade mark law, case VI SA/Wa 227/07

September 15th, 2007, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 13 April 2007 case file VI SA/Wa 227/07 interpreted the provisions of Article 129(2)(ii) 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.

2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods.

The Court ruled that Article 129(2)(ii) of the IPL, refers to purely descriptive signs, i.e., characters that the direct and sole function is to provide information about the goods and not on its origin. The distinctiveness of the mark is the fact that the sole and direct information is information which indicates the characteristic of the goods. These signs that may constitute a determination of such characteristics only in a way of indirect conclusion, do not have the descriptive nature. The promotional message of the sign never itself makes it non distinctive, as well as the unoriginal slogan does not decide by itself about the lack of its distinctiveness. This case concerned the registration proceedings of word trade mark “ZAKUPY U NAS WEJDĄ CI W KREW” R-219731 (in English: Shopping with us you will come in the blood) owned by Polish company RAMPEX K. Termin T. Termin Spółka Jawna from Tychy.

Categories: Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 129(2)(iii) IPL | Art. 145 IPL | distinctive character | trade mark examination | trade mark refusal | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 1420/06

November 11th, 2006, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 31 October 2006, case file VI SA/Wa 1420/06 held that while examining whether the rights of protection may be granted, it should be determined whether a sign could serve as a trademark at all. Only after it was decided that a sign could be a trademark, one should examine whether a mark is sufficiently distinctive and therefore to check whether the sign is suitable for distinguishing the specific goods in trade, to designate of which it has been applied for. The lack of distinctive character of a trade mark is considered as the absolute grounds for refusal to trade mark registration, but a sign may acquire distinctive character as a result of use.

The Court found it difficult to say that red color combined with different kinds of equipment and tools, or accessories used in construction is something extraordinary, unique and unprecedented, which could stick decisively in the memory and let the consumer individualize the goods in the market among the goods of the same type but originating from different companies. This judgment concerned separate Color RED Pantone C32, IR-803195.

Categories: Art. 129(1)(ii) IPL | Art. 245 IPL | distinctive character | non-traditional trade marks | Polish Act on Industrial Property Law | single colour | trade mark examination | trade mark refusal | trademark law | Voivodeship Administrative Court.