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Archive for: Art. 131(1)(ii) IPL

Trade mark law, case Sp. 500/11

January 30th, 2012, Tomasz Rychlicki

On July 2008, Barbara Hildman requested the Polish Patent Office to invalidate the right of protection of the word-figurative trade mark BIKINI CHRISTIAN DIOR PARIS R-175224 owned by Parfums Christian Dior from Paris, and registered for goods in Class 03 such as body and face care products. Barbara Hildman argued that BIKINI CHRISTIAN DIOR PARIS R-175224 is similar to the trade mark BIKINI R-124158 registered with an earlier priority.

R-175224

Parfums Christian Dior admitted that the trade mark at issue was registered for similar range of goods, but the disputed sign has other distinctive elements such as CHRISTIAN DIOR and a colorful label, which proves that there is no risk of consumers’ confusion. Moreover, the Company argued that the contested mark containing the element CHRISTIAN DIOR is produced and marketed by the producer of luxury goods and it is basically identical to the well-known and reputable company name of the holder – Parfums Christian Dior. These products, as exclusive goods, are always sold at exposed places clearly marked with the company name “Christian Dior”, which reduces to zero the possibility of confusion with cosmetic products to other companies.

The Adjudicative Board of the Polish Patent Office dismissed the request. PPO decided that there is no likelihood of confusion, also, because the questioned trade mark is a carrier of the allure, prestigious image and aura of luxury. The combination of the weak trade mark BIKINI with a strong and recognizable sign CHRISTIAN DIOR PARIS, completely eliminates the risk of confusion between the compared trade marks by the oriented and attentive consumer.

Barbara Hildman filed a complaint against this decision. She argued that merging of the word BIKINI with the words “CHRISTIAN DIOR PARIS” and a graphic element, is like appropriation of someone else’s trade mark. The creation of trade marks by adding to them a company name and its seat distorts the nature and function of a trade mark, because each sign could be easily imitated, only adding a company name to such a sign, and in that case the registration of the earlier mark would be quite superfluous and without legal significance.

The Voivodeship Administrative Court in Warsaw in its judgment of 13 May 2011 case file VI SA/Wa 41/11 repealed the contested decision and returned it to the PPO for further reconsideration. The Court ruled that the PPO did not properly examine the similarity of goods. There were no comparison on „which shelf” these identical goods are placed and who is their recipient, which in consequence it does not exclude the risk of association of the earlier trade mark with the later one. The Polish Patent Office did not consider that the necessary condition for the likelihood of confusion is at least the minimum similarity between compared trade marks. The lack of examination of this condition would mean that the company Christian Dior, or any other reputable or well-known company – due to its brand recognition, is granted the possibility to “append” to a recognizable name, or names – of any signs that are protected with earlier priority, and presenting it as their own. This would also mean illusory protection for an earlier trade mark in a situation where the reputable sign would build the family of marks, without prejudice to its recognition, just by adding a known company name or surname to any sign. In any of such cases, the appropriation by the prestigious brand of less known earlier trade marks, would show that their position and earlier protection do not apply and such protection has not been given any legal effect, and each of such a character – compared with the prestige trade mark, would have been assessed as having weak distinctive ability.

The Polish Patent Office in its decision of 19 January 2012 case Sp. 500/11 invalidated the right of protection for the trade mark BIKINI CHRISTIAN DIOR PARIS R-175224.

Tax law, case I SA/Po 210/11

September 26th, 2011, Tomasz Rychlicki

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

Trade mark law, case VI SA/Wa 827/10

January 31st, 2011, Tomasz Rychlicki

Czech entrepreneur Druchema Drużstvo pro Chemickou Vyrobu a Sluzby requested the Polish Patent Office for the invalidation of the right of protection for TEMPO R-104245 and TEMPO R-154752 trade marks registered for goods in Classes 02 and 03 such as wax paste for maintenance and renovation of car lacquer. Both trade marks are owned by INTER GLOBAL Sp. z o.o. Druchema argued that it owns TEMPO trade mark that was registered in the Czech Republic and INTER GLOBAL was for many years its sales representative in Poland and in this period the representative applied for on its own behalf and obtained trademark protection for TEMPO signs in Poland. The Polish and Czech company entered into an exclusive sales agreement, however, its provision did not include the powers to register TEMPO trade marks. INTER GLOBAL argued that it created and registered different trade marks. The PPO invalidated the rights of protection in its decisions of 5 October 2009 case files Sp. 448/05 and Sp. 449/05 . INTER GLOBAL filed a complaint against both decisions.

R-154752

The Voivodeship Administrative Court in Warsaw in its judgment of 29 October 2010 case file VI SA/Wa 827/10 dismissed the complaint and ruled that it was not necessary for the recognition of bad faith of the applicant for the right of protection for a trade mark, that the the contracting party has used a trade mark identical to a sign of its business partner during their commercial cooperation. It was sufficient that during the commercial cooperation the contracting party has used a trade mark that was very similar to the trademark invalidated.

R-104245

The Voivodeship Administrative Court in Warsaw in its judgment of 29 October 2010 case file VI SA/Wa 828/10 also dismissed the complaint and ruled that many years of cooperation between Polish and Czech entrepreneurs led to the fact that INTER GLOBAL had clear information about Druchema, and how it designates its products. For these reasons, by applying for the protection for the mark in question that was very similar to a trade mark used by Druchema and doing it without its consent and knowledge, INTER GLOBAL was clearly acting in bad faith. Both judgments are 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 1425/10

December 15th, 2010, Tomasz Rychlicki

On 17 July 2008 Eltel Networks S.A. requested the Polish Patent Office to make a decision on the lapse of the right of protection for ELTEL R-75862 trade mark that was registered for ELTEL Przedsiębiorstwo Usługowo-Handlowe Brodnicki Bolesław from Poznań. The PPO concluded that the evidence submitted (invoices), despite using slightly different terms refer to services that correspond to services protected by the registered trademark. Eltel Networks filed a complaint against this decision.

R-75862

The Voivodeship Administrative Court in its judgment of 15 October 2010 case file VI SA/Wa 1425/10 held that documents, in particular orders, invoices, delivery or sale receipts, as well as labels, packagings and related evidence that is demonstrating the real occurrence of goods or services in trade, should be deemed as the essential evidence. But the crucial evidence are the invoices, because labels, tags, hangers, bags and seals for clothing, and pictures of stores do not show and prove the actual sale of goods marked with the sign, nor did they show the measurements and scale. Without invoices, the advertising materials, such as calendars, cards, pictures with the logo, can play only a supporting role. The Court agreed with the PPO and dismissed the complaint. The judgment is not final yet.

Trade mark law, case II GSK 849/09

December 8th, 2010, Tomasz Rychlicki

In 2005 the Polish Patent Office registered “MASTER COOK JAPART” R-164044 trade mark for Przedsiębiorstwo Produkcyjno-Handlowo-Usługowe “JAPART” Zakład Pracy Chronionej from Panki. Podravka Prehrambena Industrija form Koprivnica, Croatia, the owner of “PODRAVKA VEGETA” R-138057 trade mark gave reasoned notice of opposition to the final decision of the Patent Office on the grant of a right of protection.

R-138057

The PPO in its decision of 13 June 2008 case file Sp. 523/06 ruled that “PODRAVKA VEGETA” is the reputed trade mark although Podravka Prehrambena also supplied very worthless evidence materials. However, the PPO agreed with the owner that its trade mark was introduced on the Polish market in 1994 which was properly supported by documents issued on 11 October 1994 by the company’s marketing department. From this date the reputation of the trade mark could have been created and the existence of reputation is established before the date of application for the trade mark. In case of “MASTER COOK JAPART” it was before 3 April 2002. Therefore, the PPO invalidated the right of protection. Japart filed a complaint.

R-164044

The Voivodeship Administrative Court in its judgment of 22 May 2009 case file VI SA/Wa 2147/08 dismissed it. The VAC came to the conclusion that Japart used a specific, multi-element composition of a reputed mark. The Court held that the likelihood of obtaining unfair advantage from the reputed trade mark is the obstacle that justifies the refusal to grant an exclusive right to sign that is identical or similar to the earlier a famous mark. It was therefore sufficient to assume that the applicant could use investments and financial efforts, which have previously been made by the owner of earlier trade mark to build an attractive image of the mark and attract customers. Japart filed a cassation complaint.

The Supreme Administrative Court in its judgment of 12 October 2010 case file II GSK 849/09 agreed with the VAC and dismissed the case. See also “Unfair competition, case I ACa 1270/10“.

Trade mark law, case VI SA/Wa 2013/09

June 23rd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 8 April 2010, case file VI SA/Wa 2013/09, held that the reputation is not a simple consequence of circulation of a trade mark on the market.

R-179043

The renown trade mark is one that has its own reputation, and so in addition to its recognition it must be distinguished by additional characteristics, i.e. market share (in terms of both quantity and value of traded goods), the extent and continuity of advertising of the product marked with the sign, territorial and temporal scope of trade mark use, licenses granted for the use of the trade mark, the quality of the goods, the value of a trade mark in the assessment of independent financial institutions, the amount of expenditures incurred in connection with the promotion of trade mark, the relationship to the price of substitute goods, whether (and if so, to what extent) the mark was used by third parties.

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

Trade mark law, case VI SA/Wa 442/09

March 15th, 2010, Tomasz Rychlicki

In May 2006, the Polish Patent Office (PPO) granted the right of protection for COROVIN R-173989 trade mark. Coroplast Fritz Müller GmbH & Co.K.G. the owner of COROPLAST R-91907 trade mark filed a notice of opposition to this final decision of the Patent Office on the grant of a right of protection. The German company argued inter alia that both signs are similar. The PPO rejected the opposition and the German company filed a complaint to the Voivodeship Admnistrative Court (VAC) in Warsaw.

The VAC in a judgment of 4 January 2010, case file VI SA/Wa 442/09 applied rules of the law of prägnanz (German: pithiness) while deciding this case. The Court ruled that by creating specific stimuli, one can manipulate the external context, and by influencing the human experience, one can manipulate the internal context. The law of proximity states that elements close to each other compared with other, more distant elements form the figure. The law of similarity based on the law of proximity in relation to similar elements, indicates that human perception can give rise to a new separate figures, and a new association. Next, the law of closure indicates that the perceptual system adds the missing elements and closes the form of incomplete figures, and in this case one can add to the already existing characters CORO other letters. It should be noted that the human being creates the perceived reality based on the interaction of knowledge that flows from the various branches and experience, with received stimuli. So it may be, in this case. Human knowledge derived from other branches of science may “complete” the lack in the designation and close this sign.

Therefore, the VAC annulled the contested decision, and ruled it unenforceable. This judgment is not yet final. The party unsatisfied with the ruling may file a cassation complaint to the Supreme Administrative Court.