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

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.

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.

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 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.

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 the case. 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 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.

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.

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 VI SA/Wa 1117/10

October 15th, 2010, Tomasz Rychlicki

On 25 May 2006, the Polish company AERECO Wentylacja Sp. z o.o. applied for 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 the case 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.

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.

Trade mark law, case VI SA/Wa 109/10

September 13th, 2010, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for BIO-ACTIVE R-169823 trade mark 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.

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.

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

July 19th, 2010, Tomasz Rychlicki

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

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

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.

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.