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

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.

Unfair competition, case V CSK 192/09

September 28th, 2010, Tomasz Rychlicki

AFLOFARM Fabryka Leków sp. z o.o. from Ksawerów sued two Polish companies for trade mark infringement and unfair competition delict/tort with regard to selling similar pharmaceutical products. This case went through all instances.

Z-307527

The Supreme Court in its judgement of 22 January 2010 case file V CSK 192/09 published in the electronic database LEX, under the no 564857, dismissed the complaint filed by Hasco Lek S.A. and Hasco Lek Dystrybucja. The Court held that the specificity of the market’s segment in which the magnesium preparations are sold, and which boils down to the fact that the same or very similar products gains the advantage of customers, through its specific name and advertising of such product and its packaging, requires greater care when introducing a new product of a very similar name and packaging, because it cannot mislead consumers, and it cannot take away consumers from another producer.

Categories: acquired distinctiveness | Art. 10 CUC | Art. 129(2)(ii) IPL | Art. 129(2)(iii) IPL | Art. 165 IPL | Art. 22 Constitution | Art. 5 CC | likelihood of confusion | Polish law | Polish Supreme Court | secondary meaning.

Trade mark law, case II GSK 626/09

September 6th, 2010, Tomasz Rychlicki

The Swiss company Marquard Media, current publisher of the magazine “Przegląd Sportowy”, which since 1974 always includes a supplement entitled “Skarb Kibica” (in English: Fan’s Treasure), succeeded in registering SKARB KIBICA R-134960 at the Polish Patent Office.

In 2004, Profus Management requested the invalidation of the right of protection for the SKARB KIBICA trade mark. Profus claimed that this sign has informational nature rather than distinctive character. It provided an opinion written by professor Urszula Promińska to support its arguments with this regard. In 1992 Profus Management bought the weekly football magazine “Piłka Nożna” with “Skarb Kibica” column. Marquard Media filed a trade mark infringement suit.

In 2006, the PPO has decided on the invalidation of the right of protection. The Voivodeship Administrative Court in Warsaw in its judgment of 2 October 2006 case file VI SA/WA 791/06 reversed this decision, but only because of deficiencies in the proceedings and send it back to the PPO for reconsideration.

When examining the case after the judgment, the PPO in its decision of 25 February 2008 case file Sp. 213/07 dismissed Profus Management request. The PPO held that the mere use of the sign in question by different entities cannot deprive its distinctiveness. When the case went again in 2009 to the VAC, the owner of “Przegląd Sportowy” and “Skarb Kibica” was Axel Springer Poland. The Voivodeship Administrative Court in Warsaw in its judgment of 27 February 2009 case file VI SA/Wa 2219/08 dismissed Profus complaint. The Supreme Administrative Court in its judgment of 31 August 2010 case file II GSK 626/09 upheld this decision. The SAC held that the mere use of this sign by different publishers at the date of its registration cannot deprive its distinctiveness. The distinctive character of such a sign is examined, of how it was perceived by readers interested in football and sport activities.

Categories: Art. 129(2)(iii) IPL | Art. 4 TMA | Art. 7 APC | Art. 7(1) TMA | Art. 7(2) TMA | Art. 77 APC | distinctive character | Polish Act on Trade marks | Polish Administrative Proceedings Code | Polish Supreme Administrative Court | trade mark infringement | trade mark invalidation | trademark law.

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.