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

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 623/12

August 25th, 2013, Tomasz Rychlicki

On February 2009, the Polish company MIS S.A. applied to the Polish Patent Office for the right of protection for the word-figurative trade mark mis Polecany Lider Innowacyjności Z-351511 for goods in Class 9. The PPO refused, becuase it found similarity with the CTM MIS no. 002167674, registered with the earlier priority for goods in Class 9 and 42 and owned by MIS GmbH. MIS S.A. requested for the re-examination of the matter. The Company argued that the abbreviation MIS stands for management information systems and it lacks distinctiveness, because this term is functioning for many years in the textbooks of economics, management and information technology. The company indicated also that the proprietor of the earlier Community trade mark does not use it in business and is not interested in renewal of the protection of its trade mark, because, for several years, the successor of the German company did not file a formal request to transfer the exclusive rights to the new owner. The PPO refused to grant the right of protection, and MIS S.A. filed a complaint against this decision.

Z-351511

The Voivodeship Administrative Court in its judgment of 29 september 2011 case file VI SA/Wa 1257/11 dismissed it. The Court agreed that there exists similarity of signs and goods and services. Moreover, the Court stated that along with granting the right of protection for a trade mark, the exclusive subjective right is also created, this right is effective erga omnes – against all. So it’s important to separate ranges indicated in exclusive spheres of rights, and strive to avoid a situation where this could lead to overlapping powers. The property right to the trade mark is a transferable right, therefore, the sphere of exclusivity incorporated in the sign cannot be related to the business profile of the entrepreneur, because it involves the variability of the indicated areas of exclusivity and it is impossible to determine it in the course of trade, as well as in the examination proceedings conducted before the Polish Patent Office.

The Supreme Administrative Court in its judgment of 13 August 2013 case file II GSK 623/12 dismissed the cassation complaint filed by MIS S.A.

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 II GSK 155/09

November 30th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 5 September 2008 case file VI SA/Wa 1061/08 dismissed the complaint against the decision of the Polish Patent Office on the refusal to grant the right of protection to MLEMIX MAZURSKI Z-275675 trade mark. Spółdzielnia Mleczarska MLEKPOL from Grajewo filed cassation complaint.

Z-275675

The Supreme Administrative Court in its judgment of 15 October 2009 case file II GSK 155/09 held that the statutory conditions to obtain a right of protection for trade mark set out in Article 132 of the IPL must be met on the date of a trade mark application, and not on the date of the issuance of the decision of the Polish Patent Office that ends the case.

Trade mark law, case II GSK 668/08

March 28th, 2009, Tomasz Rychlicki

On 25 January 2005, Société des Produits Nestlé S.A. applied to register the word trade mark CHOKELLA Z-290315 in Class 30, for goods such as: breakfast cereals, muesli, corn flakes, cereal bars, cereal flakes, cereal preparations, food products based on rice, flour or cereals, also in the form of ready-to-use meals. Nestlé was aware that there is a possiblity that the Polish Patent Office rejects the application because of the earlier registration of the trade mark CHOKELLA R-85159, registered with priority on 30 August 1993 for the Company Kelsen The International Bakery A/S from Norre-Snede, which during Nestle’s application was under the grace period based on the provisions of Article 132(1)(iii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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 for a trade mark shall not be granted, if the trade mark is:
(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.

On 3 February 2005, Nestle filed before the PPO a request for a declaratory decision which would affirm the lapse of the right of protection for the trade mark CHOKELLA R-85159, because of its non-use. According to Nestle, the declaratory decision should be effective from the date when an event which involves the effect of the expiry occured, i.e., at the date when the 5-year time period of non-use of a trade mark expired.

On January 2006, The PPO, dismissed the proceedings on the grounds that it was pointless, since before the date of Nestle’s request the rights of protections for CHOKELLA trade mark expired on 30 August 2003, under the law, due to the failure to extend the protection for the next ten years. It was unacceptable for the PPO to decide on the lapse of the rights of protecion for a trade mark, which did not exist at the date of application for such declaration. The PPO indicated that Nestle’s request was filed almost two years after the expiry of the CHOKELLA trade mark, so dismissal of the proceedings was justified because of the lack of subject that would be suitable for a substantive judgment. The PPO ruled that the right of protection shall expire on the date of the decision with effect from the date of filing a request to declare the right of protection for the trademark lapsed. So the decision has a constitutive nature and is applicable ex tunc. The PPO did not agree with Nestle’s argument, and the construction and interpretation of the provisions of Article 169(2) of the IPL.

The Patent Office shall make a decision on the lapse of the right of protection for the trade mark at the request of any party having a legitimate interest therein.

The PPO decided that this prejudge the declaratory nature of the decision on the lapse of the rights of protection and it differs from the provisions afforded in the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

Article 25.
The right deriving from registration of a trade mark shall lapse:
(i) on expiry of the term of protection;
(ii) on relinquishment of the right by the person entitled under the registration of the trade mark;
(iii) on failure to use the mark;
(iv) on loss of sufficient distinctiveness of the trade mark;
(v) on termination of economic activity on the part of the owner of the right deriving from registration of the trade mark.

Article 26.
In those cases referred to in section 25, items ii) to v), the Patent Office shall cancel the right deriving from registration of the trademark.

Article 30.
(1) Any person having a legitimate interest may submit a request for confirmation of lapse or a request for annulment of the right deriving from registration of a trade mark.

In the PPO’s opinion the provisions of article 169(2), beside different nomenclature of institutions (i.e. registration rights in the TMA and the rights of protection in the IPL), are identical and, even if the TMA did not indicate the date on which the lapse of registration rights or rights of protection, the legal doctrine and the case-law have established a method of calculating such date based on a specific event, for which it is considered the date of filing the request before the Patent Office to decide on the lapse of the right of protection for the trade mark.

Nestle filed a complaint before the Voivodeship Administrative Court in Warsaw, and argued that, contrary to the PPO findings, the IPL quite differently regulates the rules of declaration on the lapse of the right of protection for the trade mark. The Office shall issue a decision on the lapse of the rights of protection for trade mark and the provisions of Article 169(2) of the IPL indicates clearly that the decision is a declaratory act with a constitutive effect, that is, the decision itself, does not abolish the rights, but merely states that the right is expired under the law, which has effect for third parties from the time it was decided.

The Voivodeship Administrative Court in Warsaw in its judgment of 12 December 2007 case file VI SA/Wa 791/07 dismissed the complaint. The Court agreed with the PPO’s findings. Nestle filed a cassation complaint before the Supreme Administrative Court.

The Supreme Administrative Court in its judgment of 21 January 2009 case file II GSK 668/08 annulled the ruling of the Voivodeship Administrative Court. First, the Court noted that the Supreme Administrative Court in its judgment of 23 April 2008 case file II GPS 1/08 held that according to the provisions of Article 169(1)(i) of the IPL, the date of lapse of the right of protection for a trade mark is set on the last day of a period of five successive years, counting from the first date of non-use. See also “Trade mark law, case II GPS 1/08“. The SAC ruled that aforementioned judgment can not be excluded from the examination of the matter of Nestle’s complaint. According to the Court, it is accurate and consist of compelling arguments that are sufficient to answer the question formulated in Nestle case. The Court held that the similarity of the nature of “industrial property” within the meaning of property in the civil law context is in the exclusive use of goods that are understood as property, the beneficial use and disposal of such goods. However, the industrial property differs because its formal nature that is resulting from the relationship with a decision on granting the rights of protection, invalidation and the lapse of rights of protection. The decision to grant the rights of protection for a trade mark mark is clearly a constitutive act creating the legal status for a person. Declaratory decisions can not determine the occurrence of the new legal situation, but must refer to another fact or event occurring earlier in time and combine them with the rights or duties of the entity (legal or natural person). The vague regulations of the TMA encouraged the formulation of views on the constitutive nature of the decision on the lapse of the registration rights of a trade mark under article 26 and 30 of the TMA. The SAC did not agree with two separate opinions issued by judges who were appointed to decide in case II GPS 1/08 and article written by professor Ryszard Skubisz and Marcin Trzebiatowski in which the authors provided examples on declaratory and constitutive nature taken from family law or labour law. According to the Court, the difficulties arise when the vague provisions of formal law create the need for an interpretation if, in connection with the answer to the question of when and on what basis (fact, event, operation), the decision has constitutive or declaratory nature. It was incomprehensible for the SAC to give the examples of judgments of nullity of marriage or fatherhood, the effects of which can not be transferred by the declaratory act on the life of the party in the family and the society. The Court held that similarities between industrial property and the instutution of the property taken from the civil law (property and ownership of tangible goods) should be taken into account to justify the recognition of decision on the lapse of the rights of protection as declaratory one instead of the principles of family law. The Court analyzed the nature of such decision in the scope of the property law rules i.e. the acquisition of property (perpetual use of the property or servitude of the ground) is decided by the declaratory ruling of the civil court following the expiry of the last day of the period when such possession is required by the formal law. The SAC also stated that the day of filing the application for declaration on lapse of the rights of protection does not affect the date of expiry of the right, because it is initiating administrative action on the request of the parties. Whether and when the rights of protection shall lapse should be declared by the findings made during the proceedings for the purposes of the law.