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Archive for: Art. 129(2)(i) IPL

Trade mark law, case VI SA/Wa 1340/12

April 4th, 2013, Tomasz Rychlicki

TERRAVITA Sp. z o.o. from Poznan requested the Polish Patent Office to invalidate the international registration of 3D trade mark IR-882978 registered for Chocoladefabriken Lindt & Sprüngli AG for goods in Class 30 such as chocolate and chocolate products. TERRAVITA argued that the international registration is a bar for a Polish company to introduce different chocolate products in a shape of a haze or bunny on the national market.

IR-0882978

The Polish Patent Office in its decision of 15 April 2011 case no. Sp. 314/09 dismissed the request. The PPO ruled that TERRAVITA did not prove that the 3D trade mark lacks distinctive character, and there was no bad faith in the trade mark application, because the Polish company did not provide any evidence that Chocoladefabriken Lindt & Sprüngli seek for the protection in order to forcing royalties and block market access. TERRAVITA filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 December 2012 case file VI SA/Wa 1340/12 repealed the decision of the Polish Patent Office and ruled it should not be enforceable.

Trade mark law, case 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 396/11

November 8th, 2011, Tomasz Rychlicki

EAST SEA POLAND Spółka z o.o. filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark BIEN DÔNG R-204010 registered for services in Classes 36, 39 and 43, and owned by AEROCENTER TRAVEL Trinh Huy Ha.

R-204010

EAST SEA claimed that this mark is descriptive, because in the translation from Vietnamese to Polish language, it is the name of the South China Sea – Biển Đông. This name is the official designation of the geographic area used in the Socialist Republic of Vietnam and as such it should remain free to use on the market. The company argued that this trade mark may lead to consumers’ confusion, in particular those of Vietnamese nationality, as to the nature or characteristics of services provided by the owner, because the sign in its content relates to the maritime area, which is associated with maritime transport, and not to the services that it was registered for. EAST SEA argued that the Bien Dong designation may be misleading as to the place where services are provided, as the owner provides its services in Poland and not in Vietnam. It is worth mentioning that EAST SEA applied for three trade marks that include BIEN DONG words.

Z-290648

AEROCENTER TRAVEL argued that the Bien Dong is strictly abstract expression for the average Pole who doesn’t know what it means in Vietnamese. The Company disagreed, that this is false or fraudulently marked geographical origin of their services, since none of the customers going to the office in Warsaw would expect it to be in Vietnam at the South China Sea.

The Polish Patent Office dismissed the opposition and EAST SEA POLAND decided to file a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 13 May 2011 case file VI SA/Wa 396/11 dismissed it and held that the Polish Industrial Property Law – in principle – does not preclude the registration in Poland as a national trade mark, the word that is taken from the language of another country in which language this word is devoid of distinctive character or it is descriptive for the goods or services for which the registration was sought, unless recipients/consumers in the State in which registration is sought, would be able to read the meaning of this word.

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 II GSK 67/10

April 14th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for the word-figurative trade mark 1001 R-157046 registered for goods in Class 16 such as posters, albums, almanacs, stationery, blocks, drawing blocks, brochures, magazines, charade magazines, prints, forms, newspapers, calendars, calendars with loose pages, filing cards, cards, card-notices, postcards, comics, books, crossword puzzles, stationery, stickers, notepads, covers, bookmarks, drawing kits, notebooks, and owned by Agencja Wydawnicza TECHNOPOL Spółka z o.o. The PPO ruled that this trade mark lacks distinctiveness. TECHNOPOL filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 18 September 2009 case file VI SA/Wa 1164/09. Technopol filed a cassation complaint.

R-157046

The Supreme Administrative Court in its judgment of 10 February 2011 case file II GSK 67/10 dismissed it and ruled that a trade mark which lacks primary distinctiveness will acquire distinctiveness or secondary meaning through advertising, if it is used for so long that it will be associated not with the original descriptive content, but the source of its origin – a specific goods produced by a particular manufacturer. The practice of different publishers who used different numbers and numerals in tiles of magazines did not allow for 1001 to acquire secondary meaning.

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 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. This decision is not yet final.