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

Trade mark law, case no. Sp. 407/12

February 12th, 2013, Tomasz Rychlicki

Bayerischer Brauerbund e.V. from Germany requested the Polish Patent Office to invalidate the right of protection for the international word-figurative trade mark BAVARIA IR-1051133 registered goods in Class 32 such as beer and non-alcoholic beverages for the Bavaria N.V. from the Netherlands.

IR-1051133

Bayerischer Brauerbund e.V. claimed infringement of the right to a geographical indication, and noted that the questioned trade mark is misleading, and it was applied in bad faith.

However, the PPO has not had the opportunity to comment substantively on the matter, because during the hearings, Bavaria N.V. waived its right. In these circumstances, the Adjudicative Board of the PPO in its decison of 22 January 2013 case no. Sp. 407/12 discontinued the proceedings as irrelevant.

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.

Trade mark law, case II GSK 1261/10

April 9th, 2012, Tomasz Rychlicki

The Polish Patent Office in its decision of 29 January 2010 case no. DT-581/08 refused to grant the right of protection for the word-figurative trade mark FILIPETTI MONTENERO SPUMANTE DEMI SEC DALLA TRADIZIONE ITALIANA Z-298140 that was applied for by Domain Menada Sp. z o.o. for goods in Class 33. The PPO decided that this trade mark is similar to the word trade marks FILIPETTI R-101614 and R-140718 owned by Belvedere S.A. Domain Menada argued that it is a part of the Belvedere Group, and provided a letter of consent. Domain Menada filed a complaint against this decision but the Voivodeship Administrative Court in its judgment of of 21 June 2010 case file VI SA/Wa 710/10 dismissed it. See “Trade mark law, case VI SA/Wa 710/10“. Domain Menada filed a cassation complaint.

Z-298140

The Supreme Administrative Court in its judgment of 8 December 2011 case file II GSK 1261/10 ruled that the letter of consent was not binding and the PPO examined its effects in different aspects, based on gathered evidence, and it found that the letter of consent is not an exemption to grounds for refusing trade mark protection. The SAC stressed that the system of registration of trade marks under the Polish Industrial Property Law is to guarantee the protection of the interests of businesses and consumers. Under the present regulations, the Polish Patent Office may refuse to register a trade mark, despite the agreement between the professional entities that are active in business, due to the risk of misleading and confusion of consumers as to the origin of the goods from a particular entrepreneur. In this sense, the mere will of particular businesses does not directly create and shape the public policy. The PPO is a public authority that takes a decision on the registration of a trade mark, taking into account ex officio circumstances specified in the IPL. The PPO is therefore bound by the provisions of generally applicable laws, and these – as it was indicated above – protect the position and the consumer’s interest.

Trade mark law, case VI SA/Wa 1319/11

November 28th, 2011, Tomasz Rychlicki

Designer drugs are well-known as “dopalacze” in Poland (in English: boosters). They were freely available on the Polish market because of the legal loophole in the Polish Act of 29 July 2005 on Counteracting Drug Addiction. In 2010, after different mainstream media reported on several cases involving health problems caused by such drugs, the Polish Government ordered a nationwide crackdown on shops selling designer drugs, memory enhancers or noothropic substances.

In 2008, the Polish company KONFEKCJONER Sp. z o.o., one of the biggest suppliers of these products, tried to register the word trade mark DOPALACZE.com Z-345673 in Classes 30, 33, 34 and 39, but the Polish Patent Office refused to grant the right of protection. KONFEKCJONER filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 4 October 2011 case file VI SA/Wa 1319/11 dismissed it, and held that the word trade mark DOPALACZE.COM was intended to designate, inter alia, herbal substitutes for coffee, alcoholic beverages, tobacco and smokers’ articles, and delivery of goods and parcels. The recipients of these goods and services are generally understood as the broadest public possible, and the “average consumer” is reasonably well informed and reasonably observant and circumspect. The Court ruled that the sign in question may suggest that the consumption of goods bearing this trade mark may cause specific narcotic effect. There was a sufficiently serious risk that consumers receive wrong message regarding the goods. Although, products such as coffee, cigarettes, tobacco, function as goods that add energy, they are treated as stimulants or tranquilizers, however, such a trade mark may suggest that the goods have been strengthened to induce a certain narcotic effect. Smokers’ articles are deemed as ancillary to the aforementioned goods for which the registration was sought, the same applies to delivery of parcels and goods.

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 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 VI SA/Wa 711/10

September 20th, 2010, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark PRODUCT OF ITALY FILIPETTI Casa Fondata nel 1922 VERMOUTH EXTRA DRY Ricetta Originale Filipetti Prodotto seguendo la tradizionale ricetta della Casa Filipetti Z-298152 that was applied for by Domain Menada Sp. z o.o. for goods in Class 33. The PPO decided that this trade mark is similar to the word trade marks FILIPETTI R-101614 and R-140718 owned by Belvedere S.A. Domain Menada argued that it is a part of the Belvedere Group, and provided a letter of consent. The Company filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 21 June 2010 case file VI SA/Wa 711/10 dismissed it. The Court held that in any case, the mere existence of links (relationships) between entrepreneurs belonging to the same capital group cannot be regarded as a guarantee of quality of product bearing the disputed trade mark.

Z-298152

It should be noted that the capital group is a specific form of business, where corporate governance is exercised at several levels – both across the group and in individual companies. The mere membership in a capital group cannot be used as an argument that the signs from affiliated companies will not mislead consumers. Domain Menada filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 December 2011 case file II GSK 1245/10 dismissed it. The SAC held that the letter of consent was not binding and the PPO examined its effects in different aspects, based on gathered evidence, and it found that the letter of consent is not an exemption to grounds for refusing trade mark protection

Trade mark law, case VI SA/Wa 2127/09

September 10th, 2010, Tomasz Rychlicki

The Polish company AFLOFARM Fabryka Leków Sp. z o.o. applied for the word-figurative trade mark “tabletki na uspokojenie Aflofarm” (in English: Aflofarm tablets for calming down) Z-298475 for goods in classes 03, 05 and 44. The Polish Patent Office refused to grant the right of protection in part of the goods in class 5 covering dietetic substances for medical use, food for babies. The PPO held that the right of protection shall not be granted for a sign that misleads the public as to the nature and properties of the good. Such misleading information is a sign that may cause false image of the average buyer as to the nature of the product, its quality or properties. The assesment of content of a signs is made by him or her from the perspective of the average consumer. The interest of the buyers requires the assumption that the sign is misleading, once a small group of consumers may be misled as to the characteristics of the goods or services, since these characteristics may affect the decision taken, in relation to those goods or services. Under such assumption, the assessment cannot be affected by anything outside the relationship sign – the goods with the reasonable buyer’s idea on such relationship. It follows that the sign “tabletki na uspokojenie Aflofarm” on the goods listed in class 5 should be considered as misleading the buyers as to the nature, purpose, or functional characteristics of these goods.

Z-298475

AFLOFARM argued, that it’s not true that the buyer/consumer “is left alone” with a sign and a product bearing the questioned trade mark. These products are only available in pharmacies and are issued only by a professional that is a pharmacist. Thus it excludes the confusion of the average consumer as to whether he or she has bought the wrong product.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 March 2010 case file VI SA/Wa 2127/09 agreed with AFLOFARM’s arguments and reversed the contested decision. The Court also noticed that “tabletki na uspokojenie Aflofarm” trade mark was applied for dietary agents/means for medical use, rather than dietary substances for medical purposes. For this reason, the Court held that the goods that are marked with a “tabletki na uspokojenie Aflofarm” trade mark will not cause consumers’ confusion since products of such indications or effectiveness can be classified differently, depending on their registration or application.

Trade mark law, case VI SA/Wa 710/10

August 30th, 2010, Tomasz Rychlicki

On 25 July 2005, DOMAIN MENADA Sp. z o.o. from Warsaw applied for the right of protection for FILIPETTI MONTENERO SPUMANTE DEMI SEC dalla tradizione italiana trade mark in class 33. The Polish Patent Office informed DOMAIN MENADA that there exist earlier trade marks owned by Belvedere S.A. and refused to grant the right of protection for the applied sign. DOMAIN MENADA filed a complaint in which the company argued that it is a member of Belvedere Group and provided a proper letter of consent.

Z-298140

The Voivodeship Administrative Court in Warsaw in its judgment of 21 June 2010 case file VI SA/Wa 710/10 held that in any case, the mere existence of links (relationships) between entities belonging to the same capital group cannot be regarded as a guarantee of quality of product bearing the disputed trademark. It should be noted that the capital group is a specific form of business, where corporate governance is exercised at several levels – both across the group and in individual companies. The mere membership in a capital group cannot be used as an argument that the signs from affiliated companies will not mislead consumers.

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.

Trade mark law, cases VI SA/Wa 1996/08 and VI SA/Wa 1995/08

July 11th, 2009, Tomasz Rychlicki

On August 2008, in a post entitled “Trade mark law, case Sp. 127/07 and Sp. 254/07” I commented on two decisions of the Polish Patent Office regarding differences in labels for mineral water that shared the same word element “Zloty Potok” (“Golden stream”), this being also the name of a village from Gmina Lesna.

The vogt of Gmina Lesna and Zloty Potok Company did not agree with PPO’s findings and they lodged a complaint to the Voivodeship Administration Court in Warsaw arguing that Sokpol Company’s trade mark “Zloty Potok” R-177610 may lead consumers to confusion as regards the orgin of goods, that it was applied for in bad faith and it is unlawfully using the name of a village. The PPO argued that according to the Court of the First Instance’s findings in case , Peek & Cloppenburg KG v. OHIM (Cloppenburg), the registration of geographical names which are unknown to the relevant class of persons is not in principle precluded.

The Voivodeship Administrative Court in Warsaw dismissed both complaints in its judgments, case files VI SA/Wa 1996/08 and VI SA/Wa 1995/08. The VAC held that the disputed mark should be assessed as a whole, which in this case concerns a sign that is made up of figurative element and “Zloty Potok” description. In consequence, this trade mark is is fanciful sign which could not constitute the registration of a geographical or historical name. The sign does not mislead consumers because it does not contain information that the materials for the production of goods it was registered for come from Zloty Potok, but that they originate from Jura Krakowsko-Czestochowska. Thus the argument based on bad faith registration cannot be taken into account.

See also my posts entitled “Trade mark law, case 6 II SA 1156/02“, “Trade mark law, case II SA/Wr 2928/02” and “Trade mark law, case VI SA/Wa 1945/05“.

Categories: Art. 131(1)(iii) IPL | Art. 131(4) IPL | Art. 132(1)(i) IPL | geographical name as trade mark | Voivodeship Administrative Court.

Trade mark law, case II SA/Wr 2928/02

July 10th, 2009, Tomasz Rychlicki

On 10 October 2002, the city council of Polanica Zdrój passed resolutution no XLIV/247/02 on permission to use the commercial name of the city. The council agreed that the trade mark application consisting of “Polanica Zdrój” words would be applied on behalf of ZUK company. The resolution also included an attachment – a model contract which was deemed as an integral part of the resolution. The format of this agreement had the same legal nature as the resolution. The agreement set out, inter alia, the terms and conditions of use of the city name as a trade mark for mineral water, the rules for ZUK company regarding the payment to Gmina, the amount of the monthly fee – set to one grosz (a hundredth part of 1 złoty) – from a bottle of water sold, but not less than 5000 PLN per month, the rules how to change the contract, the method of settling disputes.

On 5 Nover 2002, the governor of a voivodeship (a first instance body to decide on the validity of local governments legal acts) ruled the resolution invalid. The governor decided that Polanica Zdrój was not the name of local government (gmina) but a geographical designation that is widely used in the Republic of Poland and abroad. Nouns and adjectives based on that geographical name are used without any restrictions. Reducing the use of a common name and its commercialization requires a proper law – an enactment. In the current legal system, there is no such law, therefore in other cities their names are used without restrictions.

Gmina filed a complaint to the Supreme Administrative Court arguing that, while filing an application for the registration of trade mark consisting of the geographical name of Polanica Zdrój, the company ZUK has a mandatory obligation to demonstrate the right to use the name. The Governor asked the court to reject the complaint because a geographical name is not the name of local government but the name commonly used and there is no legal basis for placing restrictions on its use, and what is linked to that – to charge fees for the use of a Polanica Zdrój name and that the name of a place can not be regarded as a trademark.

The Supreme Administrative Court (oz. Wroclaw) in its judgment of 18 March 2003, case file II SA/Wr 2928/02 ruled that there is no legal basis for the municipal council to take a resolution on the commercial use of the name of the city and to establish the level of fees charged for such use. The city council has exceeded the scope of its powers by setting a draft of a contract in its resolution and stepped into the powers of the mayor which is a body entitled and empowered to manage the city, and thus being the right party to enter into such contracts.

Categories: Art. 131(1)(iii) IPL | Art. 131(4) IPL | Art. 132(1)(i) IPL | geographical name as trade mark | Polish Supreme Administrative Court.

Trade mark law, case VI SA/Wa 1510/08

November 26th, 2008, Tomasz Rychlicki

BWS Poland sp. z o.o. applied for trade mark registration for the word-figurative sign “SUNLINE TOKAJI FURMINT” Z-246957 on 26 February 2002, in class 33 for alcoholic beverages. The Polish company BARTEX-Bartol reported observations as to the existence of grounds that may cause a right of protection to be denied. BARTEX-Bartol claimed that Polish Patent Office (PPO) would undermine the protection of third-party rights, namely the Hungarian company Tokaji Kereskedőház Rt., because the sign that BWS applied for contained the name of the Hungarian Company. BWS explained that it imported wine from another Hungarian company and that the label “SUNLINE TOKAJI FURMINT” would not lead customers in confusion as regards the orgin of goods.

However, the Polish Patent Office issued a decision denying protection rights for a trade mark that BWS has applied for. The PPO held that granting protection rights would be against provisions included in articles 131(1)(iii) and 131(3) 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments.

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.

(…)

Article 131(3) of the IPL
In the case of wines and spirits, any trademark, which incorporates geographical elements discordant with the true origin of the good, shall be considered as a trademark misleading the public.

BWS appealed to the Voivodeiship Administrative Court (VAC) in Warsaw. During the hearings, the company claimed that it imported the wine from the vineyard of Vagra Pincészet Kft, which sells Tokaji Furmit Sulina wine, and that the Hungarian company agreed the sign could be used by its Polish business partner. BWS argued that Tokaj and Furmit means the region and strain of grapes. BWS presented an opinion that it applied for trade mark protection for a specific word-figurative sign, and that it had no intention to prohibit anyone to use these names.

The Polish Patent Office emphasized that TOKAJI is geographical indication of this kind of alcoholic beverage, which is used by manufacturers in Hungary as had been already agreed with the European Commission (and procedures for the arrangements are discussed with Slovakia) – this is why the PPO is obliged to take such term into account as a GI. The PPO also pointed out that the company may distribute the wine under SUNLINE name and to use it toghether with TOKAJI word, but it is not allowed to gain exclusive rights in TOKAJI and FURMIT signs. The VAC in judgment of 25 September 2008, case file VI SA/Wa 1510/08, has fully agreed with PPO’s decision and dismissed BWS appeal. The judgment is not final.

Trade mark law, case Sp. 127/07 and Sp. 254/07

August 11th, 2008, Tomasz Rychlicki

Sokpol Company from Myszków has applied for the word-figurative trade mark “Zloty Potok” (“Golden stream”) in 2001. In 2006, the Polish Patent Office granted the right of protection for this trade mark, R-177610.

R-177610

Zloty Potok Company, which has its headquarters in the village of Złoty Potok, applied for a word-figurative trade mark “Zloty Potok Naturalna Woda Zródlana” in 2005. In 2007, the PPO granted the protection right R-185543. Zloty Potok and Gmina Janów have filed a request for invalidation of the right of protection Sokpol’s trade mark before the Polish Patent Office.

R-185543

The patent attorney representing Zloty Potok argued that Sokpol’s trade mark is misleading because its products did not come from Zloty Potok’s spring from Janów and that such water is only produced by Zloty Potok. Sokpol only received a consent to use this name for its products from the administrative district of Gmina Lesna, where Zloty Potok is located. However the distance between the village of Zloty Potok and Myszków, where Sokpol is based,is around 370 km. This situation, in Zloty Potok representative’s opinion, could also lead to consumers confusion.

The PPO in its decisions case no Sp. 127/07 and Sp. 254/07, has ruled that both “Zloty Potok” trade marks differ because of their rich layout and fancy designs and that there is no risk of consumer confusion as regards to origin of goods. These decisions are not final and are not binding. Both parties may lodge a complaint to the Voivodeship Administrative Court.

Trade mark law, case II GSK 185/08

June 23rd, 2008, Tomasz Rychlicki

Przedsiebiorstwo Przemyslu Spirytusowego Polmos in Warszawa objected to the trade mark application for SPIRYTUS REKTYFIKOWANY PL 1784, R-134685, filed by POLMOS LANCUT SA. Polmos in Warszawa claimed priority of an earlier trade mark – SPIRYTUS REKTYFIKOWANY, R-63628.

R-63628

SPIRYTUS REKTYFIKOWANY was bought by Polmos in Warsaw during an auction held by the Polish Ministry of the Treasury. All Polmos companies agreed in 1999 that they would not use trade marks owned by others in the Polmos “group”.

The Polish Patent Office (the PPO) decided that the contested mark had no distinctive character and it only indicated a specific kind of alcohol and method of production. Przedsiebiorstwo Przemyslu Spirytusowego Polmos in Warszawa lodged a complaint before the District Administrative Court in Warsaw seeking to annul the PPO’s decision. However, the Court sided with the PPO’s findings and rejected the complaint. The Court held that both signs were word-figurative marks and should be perceived and examined as whole.

R-134685

Polmos in Warszawa filed a cassation complaint before the Supreme Administrative Court in Warsaw. It supported its position with an argument that SPIRYTUS REKTYFIKOWANY acquired secondary meaning and had a good reputation bacause of the use during the course of trade. The Supreme Administrative Court in its judgment of 18 June 2008, case file II GSK 185/08 did not agree with such statements and rejected the complaint. The Court found that Polmos in Warszawa was seeking exclusive rights in the spirytus rektyfikowany sign, which was a purely informative term to be found in Polish dictionaries and official norms.

This case is the leading example of problems with trade mark portfolios of companies that were privatized in Poland after 1990. Polmos was state-owned monopoly, controlling the Polish market of spirits and other alcohols from middle ’20s until 1990, when it was divided and privatized into several independent companies.

Trade mark law, case VI SA/Wa 1945/05

July 11th, 2007, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 17 January 2006, case file VI SA/Wa 1945/05 in case concerning “SZCZAWNICKI zdrój” R-147476 trade mark ruled that the Polish Patent Office while deciding the request for the invalidation of the right of protection for a trade mark has to examine the sign in a form in which it was applied for the registration not in a form that the trade mark is used on the market, for example as the product label. The refusal of the invalidation of “SZCZAWNICKI Zdrój” trade mark (used inter alia as a designation for mineral waters), which was conducted by the Polish Patent Office without adequate consideration, especially in case if the disputed mark has information character that points to the place of origin of goods that are produced by the prorietor of the earlier trade mark registration and which may in consequence be perceived by the consumers as an indication which has no relation with a given producer, was made in violation with the provisions of administrative procedure.

R-147476

Trade mark law, case 6 II SA 1156/02

June 11th, 2006, Tomasz Rychlicki

On 10 April 1996 the Polish company PPZU Kry-Pop from Krynica filed a request to the Polish Patent Office to issuee a decision on the invalidation of of the right of protection for word-figurative trade mark Krynica Zdrój R-88722 owned by “Mul.” company from Warsaw (later on the ownership of the company was transfered to Krynica Zdrój Sp. z o.o. from żywiec) registered in class 32 for goods such as sparkling mineral water, mineral water and flavored water.

R-88722

Kry-Pop argued that the contested trade mark is similar to its trade mark “Kryniczanka” R-95268 registered with an earlier priority which is also widely known in Poland for the designation of mineral water originating from the area of the town of Krynica. The Voivodeship Administrative Court in Warsaw in its judgment of 12 May 2004, act signature 6 II SA 1156/02, ruled that “Krynica Zdrój” and “Kryniczanka” trade marks are not similar to the extent that they may mislead customers as to the origin of the goods and they differ in visual and phonteic aspects. In addition, in the absence of similarity of both trademarks it was difficult for the Court to decide whether the rules of social coexistence were violated by the later registration of a trade mark which has a different phonetic tone and which is not misleading customers about the origin of goods.

Trade mark law, case I ACr 770/93

February 24th, 2005, Tomasz Rychlicki

The Appellate Court in Gdańsk in its judgment of 24 November 1993, case file I ACr 770/93, held that the name “Gdańsk” is not the local government unit, which is the “Gdańsk Municipality”, but a geographical name used in Poland and abroad. Foreign language versions are well-established names of Gdańsk, e.g. German – Danzig, Italian – Danzica, Latin – Gedania. Nouns and adjectives form the geographical name are used without restrictions. Restrictions on freedom to use and commercialize the public goods requires introduction of a legal act. However, there is no law limiting the use of the name of the city. In particular, the provision of article 18(1) of the Polish Act of 8 March 1990 on Local Self-government (in Polish: ustawa o samorządzie terytorialnym) Journal of Laws (Dziennik ustaw) of 1990 No. 16 item 1995, as amended, does not authorize the municipal council to restrict the use of geographical names and the introduction of fees for their use. There is another legal basis for such commercialization.

It should be also noted that the names of Polish towns and cities were settled in the Polish Act of 29 August 2003 on the official names of localities and physiographic objects, Journal of Laws (Dziennik Ustaw) No. 166, item 1612, as amended. The name, short name and coat of arms of Capital City of the Republic of Poland are regulated by the Act of 15 March 2002 on the system of Capital City of Warsaw, Journal of Law (Dziennik Ustaw) No. 41, item 361, as amended. In the case of place names, which are both common nouns, the refusal of protection shall be permitted only if the other elements of the trade mark are clear that the applicant refers his sign to the name of the village and not to an ordinary noun (e.g. in addition to the trade mark there is attached a map that identifies a name with a specific town).