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Archive for: Art. 131(2)(i) IPL

Trade mark law, case Sp. 564/07

March 4th, 2009, Tomasz Rychlicki

On 21 July 2006 the PPO issued a positive decision and registered the word trade mark PLUSPIRYNA R-175822 in class 5 for pharmaceuticals products. It was applied for on 4 November 2005, by the Polish company Zakłady Farmaceutyczne Polpharma S.A. from Starogard Gdański. The German company Bayer Aktiengesellschaft from Leverkusen filed a request to invalidate the right of protection. The request was based on article 131(2)(i) and article 132(2)(ii) and (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 subsequent amendments.

Article 131(2)(i)
2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,

Article 132(2)(ii) and (iii)
2. A right of protection for a trade mark shall not be granted, if the trade mark is:
(ii) a trade mark which, before the date according to which priority to obtain a right of protection is determined, has been well-known and used as a trade mark in respect of the goods of another party,
(iii) a trade mark earlier registered in the Republic of Poland, whose registration has terminated, provided that an interval between the date of lapse of the right of protection for the trade mark and the date on which a similar trade mark has been applied for by another party, is, subject to Article 133, no longer than two years.

Bayer presented its earlier rights of protection for the trade mark ASPIRIN R-41042, which was applied for in the Republic of Poland on 20 June 1958, in class 5 for pharmaceutical preparations. Bayer alleged that Polpharma’s mark was confusingly similar to ASPIRIN and that PLUSPIRYNA is build on the reputation of Bayer’s trade mark. The disputed trade mark includes “pirin” component which in its overall assessment makes it similar to the ASPIRIN trade mark and it also weakens its reputation. Bayer has also registered other trade marks such as ASPIRIN-C R-105171, ASPIRIN R-105170 – applied for on 18 January 1994, these signs were registered on 8 September 1998 and ASPIRIN R-94326 – registered on 26 February 1997, in class 5 for goods such as medicines, pharmaceutical preparations, chemical proudcts for health care.

Polpharma argued that it has been registered a lot of trade marks including the “piryn” element. Although ASPIRIN trade mark has been applied to register in Poland in 1958, but for many years products bearing this sign were not available on the market in general, only in Pewex and Baltona shops – these two types of shops operated in the communist Poland selling otherwise unobtainable Western goods in exchange for Western currencies. Polpharma provided a whole series of trade marks that include “piryna” element – a well-known word mark POLPIRYNA R-48888 protected since 1969, and available on the Polish market since 1955, word trade mark POLOPIRYNA C R-55084 protected since 1976, the word trade mark CALCIPIRYNA R-96016 protected since 1994 and the word trade mark Etopiryna R-59876 protected since 1983.

The Polish Patent Office did not agree with Bayer’s arguments and dismissed the invalidation request in its decision of 3 February 2009, case file Sp. 564/07.

Trade mark law, case Sp. 451/07

January 22nd, 2009, Tomasz Rychlicki

On 1 April 2003, the Polish company Scooter sp. z o.o. from Bytom applied to the Polish Patent Office for the word-figurative trade mark CITY ROCK Z-262984 for goods and services in classes 9, 12, 21, 24, 25, 35, 36, 40, 41, 42, 43. After almost three years, the PPO granted the right for protection R-173752 in its decision of 6 March 2006.

R-173752

Hard Rock Holdings Limited from the UK filed a request for invalidation of the right of protection based on provisions included in article 131(2)(i) 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. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,
and article 132(2)(ii):
2. A right of protection for a trade mark shall not be granted, if the trade mark:
(ii) is identical or similar to a trade mark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark,

The request for invalidation was limited by the UK company to goods in classes 9, 25, 41 and 43. Hard Rock Holdings provided earlier trade mark registrations HARD ROCK CAFE R-97170, Hard Rock CAFE R-126149, Hard Rock CAFE R-140353. The company claimed that there existed visual, aural and conceptual similarity between the disputed signs which might lead to consumers to confusion. Hard Rock Holdings argued that HARD ROCK CAFE trade marks had a reputation and were used as a cult brand for restaurants in many countries. The president of the Polish company, acting without a professional representative, claimed that the signs were not similar.

The Polish Patent Office dismissed the request in its decision of 6 November 2008 act signature Sp. 451/07. According to the PPO, there was no risk of confusion between the trade marks. The PPO also stressed the fact that the word “rock” cannot be proprietarized by one entrepreneur because it indicates the genre of music. As regards the reputation, the PPO said that it is difficult to talk about HARD ROCK CAFE’s reputation because it has been present in Poland since 2007 an,d for the time being, only in Warsaw, while the contested trade mark was applied for much earlier, in 2003.