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Archive for: Art. 132(1)(ii) IPL

Trade mark law, case II GSK 2037/13

February 23rd, 2015, Tomasz Rychlicki

The Polish company FARMINA Sp. z o.o. filed before the Polish Patent Office a notice of opposition to the final decision on the grant of a right of protection for the word-figurative trade mark FARMONA Waliczek R-190461 registered for goods in Classes 3 and 5. Farmina argued that the trade mark FARMONA Waliczek is similar to its word trade mark FARMINA R-98950 also registered for goods in Classes 3 and 5. Laboratorium Kosmetyków Naturalnych FARMONA Sp. z o.o., the owner of a contested registration, argued that both signs are different, and as such there is no likelihood of confusion. FARMONA Sp. z o.o. also requested the PPO to decided on the lapse of the right of protection for the trade mark FARMINA R-98950 for goods in Class 3. In its letter of May 2010, FARMONA withdrew all previous arguments made by a former attorney in the case and has requested the PPO not to take into the account of all the evidence submitted. FARMONA argued that the goods are not similar, and from the range of over 300 prodcts, only 3 are distibuted in pharmacies, but only in those who have a cosmetic department. FARMONA argued that the parties operate in other industries. FARMONA Waliczek is engaged in the production of natural cosmetics offering a series of body care products, facial hair, as well as professional cosmetics for beauty salons and spas. FARMINA, however, claims to be a producer of drugs.

FARMINA argued that the PPO should dismiss the request to decide on the lapse of the trade mark. The Company claimed that not only it produces goods for pharmaceutical purposes, but also products for the purposes of care, which according to some people may belong to Class 5 of the Nice Classification. FARMINA stated that it uses its trade mark for the goods associated with personal care such as soaps, gels, creams, cosmetics and hair care products. The Comapny indicated that, in principle, all cosmetics contain ingredients that cause skin regeneration and it is debatable whether or not they should be considered as therapeutic agents or care products. The Opponent also argued that, due to the fact that it uses the trade mark FARMINA for goods similar or complementary to the perfumery products, such use should be considered as use of that mark for goods in Class 3 of the Nice Classification.

The Polish Patent Office noted that the right of protection for a trademark may not be invalidated on a sole ground that the trademark is similar to an earlier trademark, where the latter has not been genuinely used. This argument that the sign has not been genuinely used may only be raised when accompanied by a request for declaring the right of protection lapsed. The case should be examined jointly with the request for invalidation. The PPO decided that the trade mark FARMINA was not genuinely used for perfumery and ruled that the right of protection lapsed as of November 2002. In the opinion of the PPO, the compared trade marks had to be regarded as similar as the dominant elements in the signs are verbal elements FARMINA and FARMONA. These are words of the same length, consisting of the same number of syllables, and which contain the same beginning and ending. These words differ only in the fifth letter. The similarities are not excluded by the use of another verbal element, the word “Waliczek”, because this element is the name of the owner of the company, thus, this word refers in its content to the information that may suggest the average person, a person who organizes and operates a business or businesses, the licensee, or the founder of the company, etc. The PPO invalidated the right of protection for the trade mark FARMONA Waliczek for the following products in Class 5: antisepsis, balms for medical purposes, biological preparations for medical purposes, enzymes for pharmaceutical purposes, enzymes for medical purposes, tea with herbs, medicinal ointments for pharmaceutical use, preparations with microelements for humans and animals, tinctures for medical purposes, dietetic beverages for medicinal purposes, oils for medicinal purposes, analgesics, laxatives, vitamin supplements, extracts for medicinal purposes, medicinal herbs, candies medicinal purposes, syrups for medical use, dietetic foods for medicinal purposes, gelatin for medical purposes. Both companies filed complaints against this decision.

The Voivodeship Administrative Court in its judgment of 15 April 2013 case file VI SA/Wa 2177/12 joined the cases in one proceeding. The Court found no reason to revoke the decision of the Polish Paten Office, and dismissed both complaints. The VAC held, inter alia, that according to the established legal doctrine (opinions presented by Professor M. Kępiński in “Niebezpieczeństwo wprowadzenia w błąd odbiorców co do źródła pochodzenia towarów w prawie znaków towarowych”, published in Zeszyty Naukowe UJ 28/1982, pp. 17,18), in the short signs (words including up to 5 letters), just one letter difference should exclude the similarity. For the signs of the average length (up to 8 characters) at least 2 letters should be different to decide on dissimilarity. Again, both companies filed cassation complaints.

The Supreme Administrative Court in its judgment of II GSK 2037/13 dismissed both.

Trade mark law, case II GSK 2005/12

April 8th, 2014, Tomasz Rychlicki

The Polish Patent Office dismissed the opposition filed by E.I. du Pont de Nemours & Company against the decision on the grant of the right of protection for the word trade mark TEFAPAK R-199130 that was applied for the Polish company SINOGRAF S.A.

E.I. du Pont argued that the sign TEFAPAK is similar to its trade mark TEFLON R-49573 that was registered in Poland in 1968, and to its CTM TEFLON that was registered in 1996. According to the US company, the compared goods are identical or similar, and the signs share the same prefix TEF, which could lead to consumers’ confusion.

SINOGRAF S.A. requested the PPO to dismiss the opposition, and argued that the goods are directed to competent consumers of the proper level of technical knowledge, who have knowledge and experience in the field of materials, and thus much greater possibility of distinguishing different trade marks than the average recipient.

The PPO dismissed the opposition and found that the trade marks at issue are not similar, since they have significantly different overall impression both in the the visual and aural aspects. The PPO noted that there is no likelihood of confusion and it could not include the likelihood of association, because the goods are targeted to specialized recipients. E.I. du Pont filed a compliant against this decision.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 301/12 dismissed it. The Court held that the Polish Patent Office correctly established all circumstances of the case. The VAC agreed that the goods are identical or similar, however, the Court did not agree with the argument that the compared signs are similar to the extent that could lead to likelihood of confusion. In the opinion of the Court, the trade mark are not similar, so arguments about the use of someone else’s reputation and the reputation of the trade mark can not be justified. Dissimilar signs can not induce associations of customers, so there can be no conscious imitation and benefit from someone else’s reputation. E.I. du Pont filed a cassation complaint.

The Supreme Adminitrative Court in its judgment of 20 March 2014 case file II GSK 2005/12 dismissed it.

Trade mark law, case II GSK 2323/11

July 30th, 2013, Tomasz Rychlicki

CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER ROSS R-190192 registered for Firma Handlowa A & S PARFUME FACTORY Marek Asenkowicz, for goods in Class 03 such as perfumes products, toilet water, lavender water, colognes, deodorants for personal use. CARTIER claimed that the contested registration infringes on its company name and the word-figurative trade mark CARTIER R-59579. CHATIER ROSS is detrimental to the reputation of CARTIER’s signs and leads to a weakening of their attractiveness and may cause the loss of trust among buyers of CARTIER’s products.

R-59579

A & S argued that trade marks in this case are not similar both visually and semantically, because the word “chatier” in French means “smooth/polished” and the word “Cartier” indicates the manufacturer. The Polish company cited the judgment of the Supreme Administrative Court of 22 October 2004 case file GSK 811/04 concerning the similarity of the trade marks WELT and WEST IR-621660. A & S also noted that the documents submitted by CARTIER do not prove the reputation of the sign “Cartier”, and pointed to the differences in price of goods bearing both trade marks.

The Polish Patent Office found similarity both of goods and signs, and invalidated the contested registration. While analyzing the evidence on the reputation of the sign “Cartier”, the PPO took into account press articles on the position of the brand in the Polish market and the perception of the consumers. It was irrelevant that the parties use their trade marks to designate goods that differ significantly in price. The PPO ruled that the price of such goods may vary depending on the business strategy of the owner. A & S filed a complaint against such decision. It was dismissed by the Voivodeship Administrative Court in its judgment of 6 July 2011 case file VI SA/Wa 867/11. A & S filed a cassation complaint, but the Supreme Administrative Court in its judgment of 7 March 2013 case file II GSK 2323/11 dismissed it.

CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER COOL MEN R-199458, and the PPO followed the request. A & S complaint was dismissed by the Voivodeship Administrative Court in its judgment of 17 October 2011 case file VI SA/Wa 866/11, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 191/12 dismissed the cassation. The same outcome was in case of the invalidation of the right of protection of the word trade mark CHATIER PURL R-199457 that was owned by the A & S. The Voivodeship Administrative Court in its judgment of 6 September 2011 case file VI SA/Wa 865/11 dismissed the complaint against the decision of the PPO, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 97/12 dismissed the cassation.

Trade mark law, case VI SA/Wa 1267/11

September 19th, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 3 October 2011 case file VI SA/Wa 1267/11 dismissed the complaint brought by the Polish law firm BSO PRAWO & PODATKI – Bramorski Szermach Okorowska Kancelaria Prawna Spółka komandytowa against the refusal decision of the Polish Patent Office to grant the right of protection for the word-figurative trade mark BSO legge & Tasse Z-344754.

Z-344754

The Court agreed with the PPO that the applied sign is almost identical with the word CTM BSO no. 001463017 and ruled that for the average recipient of legal services they are similar to intellectual property consultancy, patent, design and trademark agency, because the average consumer of legal services, who comes to the office lead by a legal advisor (radca prawny) or advocate, simply instructs his case in the belief that it returns to the competent professional. The Court could not deny the competence to lawyer who is dealing with the industrial property issues and cases, as this area of law is also subject to examination for people who would like to qualify to the legal profession. This judgment is final.

Trade mark law, case VI SA/Wa 617/11

October 24th, 2011, Tomasz Rychlicki

On 17 October 2007, the Polish Patent Office registered the word trade mark Auto-dap R-197829 for Dariusz Chudobiński from Łódź. Andrzej Teodorczyk who owns Auto Serwis Dap, that is located in Pabianice town, filed a notice of opposition.

Mr Teodorczyk claimed that Mr Chudobiński acted in bad faith. He also noted that the sign in question was widely known in Pabianice and it was associated with the automotive garage operated by him under the name “AUTO DAP”. The garage was located in the immediate vicinity of the garage owned by Mr Chudobiński. Mr Teodorczy argued that the DAP company was founded by him in 1984, and its designation is an abbreviation of three names. Mr Teodorczyk pointed out that he had shares in the company AUTO-DAP sp. z o.o., that was also founded by Mr Chudobiński and his wife, however, he never transferred the right to the AUTO DAP sign.

The PPO dismissed the opposition and ruled that the Company AUTO-DAP sp. z o.o. has the property right to its company name, and Mr Chdobiński received a proper authorization to file for a trade mark Auto-dap for his own. The PPO ruled that a short abbreviation DAP, as an abstract term, can not be attributed to specific individuals, as their personal interest due to the order of letters in this expression. These letters can have different meanings for the average customer in perception of this determination. The Patent Office did not agree that Auto-dap trade maw was filed in bad faith. Mr Chudobiński submitted evidence documents that he used the name DAP in his business. Mr Teodorczyk, as one of the founders of the AUTO-DAP company, has agreed (and did not oppose) the use of the company’s name (firm) in this way. He used the same DAP designation in his business activities as an individual and in a company which shares has has sold to the owner of the registered trade mark. Mr Chudobiński filed a trade mark application according to the authorization and undertook the obligation to transfer the disputed trade mark on the company, for each request. It was therefore an application that has been made in good faith – the mark was used by the company for nearly 6 years – and the authorization for its registration by Mr Chudobiński did not violate the provisions of the Articles of Association. Mr Teodorczyk filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 16 June 2011 case file VI SA/Wa 617/11 dismissed it. The Court ruled that Mr Teodorczyk did not prove that Mr Chudobiński wanted to block business activities of Mr Teodorczyk for the reason that he has registered the disputed mark. The VAC noted also that Polish law provides that a right of protection will not be granted for a trade mark in respect of identical or similar goods, if the trade mark is identical or similar to 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. However, this trade mark has to be well-known on the whole territory of the Republic of Poland or on a substantial part of it. The recognition and knowledge of the trade mark only in less than a significant part of the Polish territory, even if it is intense, does not create the right to a well-known trade mark. Knowledge of the trade mark in one city and its surroundings, even if it’s a large one, is not enough for the sign to be regarded as a well-known trade mark.

Trade mark law, case VI SA/Wa 1345/10

January 7th, 2011, Tomasz Rychlicki

Polska Agencja Fotograficzna Studio 69 filed a notice of opposition to a final decision of the Patent Office on the grant of a right of protection for STUDIO 69 R-182300 trade mark owned by Marcin Maculewicz from Kielce. PAF claimed that the phrase STUDIO 69 was widely known and used by PAF as its trade mark. PAF also argued that according to 15 years of its business practice one can successfully operate on the media market without reserving or registering a brand name, and STUDIO 69 is a common sign that is also used widely by many companies. At the same time PAF did not claim infringement of the company name and explained that different entrepreneurs use such a sign.

The Polish Patent Office ruled that it is the duty of the opposing party to prove that a given sign is well known and is associated with products coming from the opponent. This should be demonstrated at the filing date of an application for the registration of a trade mark. The PPO explained that the well known sign is characterized by two elements. The first one is related to the function of marking the origin of goods/services (the distinctive function). A sign must have this feature in order to be registered as a trade mark. The second element is the requirement that a trade mark has became commonly known as a result of the use. According to the Polish case law and legal doctrine, a well known sign should be recognized in most of the territory, by more than half of potential purchasers of the goods. The basic criteria for assessing the objective possibility to become a well known trade mark include: the period of time of trade mark use, the situation of goods on the market (quantity, availability, method and scope of distribution), advertising campaigns and the strength/distinctive character of a trade mark. The PPO examined the evidence presented and reminded that common knowledge is assessed in terms of knowledge among potential customers. The PPO ruled that PAF has not demonstrated that more than 50% of potential customers on the Polish territory is familiar with STUDIO 69 trade mark and decided to dismiss the opposition. PAF filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 14 October 2010 case file VI SA/Wa 1345/10 dismissed the case. The Court ruled that the Administrative Court, as a rule, does not carry out hearing of evidence, because the examination of legality of an administrative decision is based on the evidence gathered in the proceeding before an administrative authority (in this case the PPO) issuing the contested decision. According to Polish legal commentators, in principle, there are three sources of trademark protection within the industrial property law: the grant of a right of protection for a trademark (in the form of an administrative decision issued by the PPO), the use of a trade mark and common knowledge of a sign. The Court cited W. Włodarczyk, The distinctive ability of a trade mark, Lublin 2001, p. 28. The VAC held that PAF did not prove that STUDIO 69 was a well known sign. The judgment is not final yet.

Trade mark law, case VI SA/Wa 1988/09

April 15th, 2010, Tomasz Rychlicki

Kraft Foods Polska Spółka Akcyjna from Warsaw, the owner of PRINCE POLO R-148617 trade mark gave a reasoned notice of opposition to a final decision of the Patent Office on the grant of a a right of protection to MARCO POLO R-174796 trade mark that was applied for by Zakłady Przemysłu Cukierniczego MIESZKO S.A. for goods in class 30.

Kraft Foods claimed that there is a risk of confusion between these trade marks, which is the result of the similarity of the compared signs and the identity of the goods. Kraft also submitted evidence to prove the reputation of PRINCE POLO trade mark. Mieszko argued that the signs are dissimilar because the graphic/figurative element of these marks is essential, and verbal elements are blurred or faint and even minor. Mieszko also found arguments of POLO PRINCE reputation very questionable, because even Kraft indicated that the goods for which its trade marks are registered marks are cheap and directed for the mass consumer.

The Polish Patent Office (PPO) In a decision of 23 April 2009, ruled that the same element POLO does not determine the similarity between both signs, because the differences occurring in the conceptual aspect rule out the risk of consumer confusion as to the origin of goods. The PPO held that contrary to the Kraft’s arguments, Marco Polo sign will primarily be associated by purchasers of goods with a famous explorer, because it is simply his name. However, PRINCE POLO sign, regardless of how it can be translated into Polish, is not used to identify a specific person and it is not a proper name. Despite the recognition of Kraft’s trade marks on the Polish market, the average consumer will associate MARCO POLO in the first place with a person of a traveler rather than as Kraft claimed with its PRINCE POLO trade marks. Therefore, the PPO rejected the notice of opposition. Kraft filed a complaint to the administrative court.

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 11 February 2010, case file VI SA/Wa 1988/09, agreed with the PPO’s assessment of the similarity and ruled that since the signs are not similar then the discussion about using someone else’s reputation is not justified. Dissimilar signs cannot cause association in consumer’s mind, so there can be no question of imitation, and conscious deriving of benefits from someone else’s reputation.

Kraft filed a cassation complaint to the Supreme Administrative Court. See “Trade mark law, case II GSK 746/10“.

Trade mark law, case II GSK 1022/08

September 11th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 19 June 2008 case file VI SA/Wa 278/08 dismissed a complaint on the decision of the Polish Patent Office on the refusal to grant the right of protection for “clim PUR” Z-270334 trade mark applied for the goods in class 3. VALEO SERVICE société par actions simplifiée filed a cassation complaint.

R-221567

The Supreme Administrative Court in its judgment of 3 June 2009 case file II GSK 1022/08 held that the Court is not alone entitled to precise (supplement or refine) of the allegations included in the cassation complaint, or making hypotheses in this regard, sanctioning so to say its deficiencies. The interpretation of the scope and direction of a complaint is also not permissible, because the cassation appeal should be drafted in a such way that there would be no questions of its interpretation.