Archive for: Art. 132(2)(ii) IPL

Trade mark law, case VI SA/Wa 807/10

November 8th, 2010, Tomasz Rychlicki

On 27 January 2007, the Polish Patent Office granted the right of protection for GUCIO trade mark R-187648 for goods in Class 25 such as children’s shoes.

Guccio Gucci S.p.A. the owner of two word-figurative trade marks GUCCI R-181633 and GUCCI R-184796 gave a notice of opposition to a final decision of the PPO on the grant of a right of protection to GUCIO trade mark. While proving the reputation of GUCCI trade marks, the Italian company stressed the fact that it owns many stores, where high-quality clothing and footwear is sold and it also includes shoes for children. The customers of these stores are known and influential people. The company argued that since the mid-twentieth century, the Gucci brand and products bearing this trade mark are associated with the highest quality and luxury – Gucci has become sort of “certificate of quality.” The Company pointed out that Gucci fashion house brings together leading, world fashion designers thus have a substantial impact on global fashion trends. Consequently, the goods that are marked with this symbol appear in numerous television programs, shows and magazines on fashion. GUCCI argued that similar trade marks in conjunction with the homogenity of goods for which these signs are clearly intended, may to lead to the risk of their association, and even confusion by customers, and this causes the possibility of customer confusion as to the origin of goods.

R-181633

Sławomir Piwowarczyk, the holder of GUCIO trade mark argued that the word GUCIO is a diminution of GUSTAW. The PPO dismissed the opposition. Guccio Gucci S.p.A. filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 30 August 2010 case file VI SA/Wa 807/10 dismissed the complaint and held that dissimilar signs cannot lead to customers’ associations, so there can be no issue of imitation, and conscious deriving of benefits from someone else’s reputation. If the similarity between the signs does not occur there is no need to examine whether there was the use of another person’s reputation. The examination whether there are similarities between the trade marks is the “precondition” of establishing the argument/view that the use of reputation has been made. The second condition is to establish/examine that the trade mark has a reputation. The judgment is not final yet.

Trade mark law, case no. Sp. 541/07

November 3rd, 2010, Tomasz Rychlicki

On 30 October 2002, Centrum Szybkiej Diagnostyki Kardiologicznej “KARDIOMED” Maciej Żabówka, Maciej Bylica from Tarnów applied for the word-figurative trade mark KARDIOMED for goods in Class 36 and in Class 44 such as rental of medical equipment, devices and medical apparatus. On 1 August 2004, the Polish Patent Office granted the right of protection R-180711.

R-180711

Another Polish entrepreneur, Centrum Kardiologiczne KARDIOMED Lucja Kieras-Deżakowska from Sosnowiec, filed a notice of opposition against the decision of the PPO on the grant of a a right of protection. The opposing party raised a number of arguments: the infringement of the rights to the company name, the misleading nature of the questioned sign, that the application for a trade mark was made in bad faith, confusing similarity. Lucja Kieras-Deżakowska argued that on 8 August 2001 she applied for the wor-figurative trade Mark Kardiomed for goods in Class 44 such as medical services for people in medical consulting rooms, counseling and medical care, m dical diagnostics, echocardiography, ultrasound, electrocardiography, stress tests, heart rate and pressure records, medical examination, physiotherapy, psychotherapy, paramedical services. The decision on the grant of the right of protection R-162886 was given on 6 May 2005. Ms Kieras-Deżakowska claimed the similarity of signs and services.

R-162886

The Adjudicative Board of the Polish Patent Office in its decision of 13 September 2010 case no. Sp. 541/07 dismissed the opposition. The PPO ruled that the services are different. And although the signs do have similarities, it eliminates the risk of confusion. The PPO also noted that the civil court, should assess whether the proprietor has committed an act of unfair competition. As for other grounds of the Board found no evidence to support them. The decision may be appealed against to the Voivodeship Administrative Court in Warsaw.

Trade mark law, case VI SA/Wa 1133/10

October 25th, 2010, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case II GSK 496/09“. The Voivodeship Administrative Court in Warsaw in its judgment of 4 August 2010 case file VI SA/Wa 1133/10 anulled the PPO’s decision and ruled it unenforceable. The Court held that the Polish Patent Office, while assessing the similarity of the opposing signs, ignored in general the question of the impact of a trade mark on recipient/consumers/buyers of the goods bearing the sign, and therefore it did not considered in a comprehensive way the impact of the entire mark, focusing only on one of its verbal elements – PREMIUM word, without attempting to explain the “impact strength (distinguishing ability)” of PREMIUM word as an informational sign that is used to designate the exceptional quality of a product.

IR-802093

In the opinion of the courts, this issue is very important, because while examining the compared signs, the impact of the opposing character – its distinctive ability may not be indifferent, and a “weak” sign must often tolerate the coexistence of the close signs. See U. Promińska, Ustawa o znakach towarowych. Komentarz, Wydawnictwo Prawnicze PWN, Warszawa 1998, p. 42.

Trade mark law, case VI SA/Wa 1099/10

October 20th, 2010, Tomasz Rychlicki

The Polish company Polski Koncern Naftowy ORLEN S.A. applied for the right of protection for word-figurative trade mark “BIG energy drink” Z-336460 for goods in Classes 06, 16, 32, 35, 43.

Z-336460

The Polish Patent Office issued a decision refusing to grant the protection in part of goods in Class 32 such as energy drinks, juices and juice drinks, carbonated and non-carbonated mineral water, drinks other than alcohol, syrups, concentrates for the preparation of drinks, sports drinks, nectars, beer and in part of services in Class 35 such as retail and wholesale sale services of energy drinks, juices and juice drinks, mineral water, alcoholic drinks, syrups, concentrates in the preparation of drinks, sports drinks. The PPO found also a conflicting CTM “BIG ENERGY” No. 002135812 registered for goods such as non-alcoholic beverages, fruit drinks, fruit juices and fruit nectars, bases and essences (included in class 32) for making the aforesaid beverages. ORLEN filed a complaint against this decision claiming that the refusal was based solely on the likelihood and hypothetical clues, not actual evidence of a convergence of signs and the resulting collision. There was also no presence of the product bearing the opposed trade mark on the Polish territory.

CTM-002135812

The Voivodeship Administrative Court in Warsaw in its judgment of 30 August 2010 case file VI SA/Wa 1099/10 annulled the contested decision. The VAC ruled the relationship between the petrol stations retail networks and certain “additional products”, bearing their trademark, is becoming ever closer. In such situation it significantly reduces the risk of confusion – the risk of misleading the public, which includes in particular the risk of associating the trademark with an erlier trade mark. The consumer begins to associate certain product (e.g., energy drink), not only with a specific sign, but also with a specific network of petrol stations, in which the drink will be available. The judgment is not final.

Trade mark law, case II GSK 765/09

October 18th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 21 September 2010 case file II GSK 765/09 held that the view that the content and scope of rights as referred to in Article 153 of the IPL were an obstacle to a possible objection by the entities, which do not have rights, which they claim to protect, does not deserve the acceptance.

Article 153
1. The right of protection shall confer the exclusive right to use the trademark for profit or for professional purposes throughout the territory of the Republic of Poland.

2. The term of the right of protection shall be 10 years counted from the date of filing of a trademark application with the Patent Office.

3. The term of protection may, at the request of the right holder, be extended for subsequent ten-year periods in respect of all or of a part of the goods.

4. The request referred to in paragraph (3) shall be submitted before the expiration of a running protection period, however not earlier than one year before the expiration thereof. The request shall be submitted together with the payment of a due protection fee.

5. The request referred to in paragraph (3) may also be submitted, against payment of an additional fee, within six months after the expiration of a protection period. The said time limit shall be non-restorable.

6. The Patent Office shall make a decision on refusal to extend the term of protection for a trademark, where the request has been submitted after the expiration of the time limit referred to in paragraph (5) or the due fees referred to in paragraphs (4) and (5) have not been paid.

The legislature thus entails exclusive rights to the use of the trade mark for the profit or professional purposes and filing the opposition is not a form of use of the mark as shown above. The same conclusions may be reached while interpreting the provisions included in Article 296(2) of the IPL, in which the legislature combines the scope of trademark protection in the form of civil claims with the use of signs in business, while the opposition is not an action in the context of economic activity.

Article 296
2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(i) a trademark identical to a trademark registered in respect of identical goods,
(ii) a trademark identical or similar to a trademark registered in respect of identical or similar goods, if a likelihood of misleading the public, including in particular a risk of associating the trademark with a registered trademark, exists;
(iii) a trademark identical or similar to a renown trademark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trademark.

Given those conditions, the exclusive rights of trademark protection does not cover the monopoly beyond the boundaries of economic activity or, in other words, use of the mark for the profit or professional purposes. The opposition remains outside the so-defined borders. This case concerned LORD R-88669 trade mark owned by REKORD S.A.

Industrial design law, case VI SA/Wa 1706/09

September 15th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 4 December 2009 case file VI SA/Wa 1706/09 held that there is no doubt that only the specialist is qualified to comment on the general impression that questioned designs produced on an informed user, as this specialist is also deemed as the informed user within the meaning of Article 104 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.

Article 104
1. An industrial design shall be considered to have individual character, if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available before the date according to which priority is determined.

2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

The Court also noted that in the assessment of evidence and proper application of the rule of law provided in Article 104 the IPL, the concept of “informed user”, “general impression” and “degree of creative freedom in developing the design”, which have not beed defined by the legislature, had to explained by the PPO and the Court. In the opinion of the Court, the essential arguments of the Supreme Court’s judgment of 23 October 2007 case file II CSK 302/07 could be applied to this case case. See “Industrial design case, II CSK 302/07“.

Wzór Przemysłowy Rp-11355

This judgment concerned the industrial design “Kanapa tapicerowana rozkładana” (in English: upholstered sofa bed) Rp-11355. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case VI SA/Wa 21/10

September 7th, 2010, Tomasz Rychlicki

The Polish company Atlantic sp. z o.o. applied for the word-figurative trade mark ATL ATLANTIC Z-313731 in classes 03, 18 and 25. The Polish Patent Office refused to grant the right of protection in part of the goods covering deodorants for personal use, soaps, perfumery, cosmetics, cosmetic kits, portable suitcases for cosmetics, travel bags for clothing, shopping bags, beach bags, handbags and women handbags.

Z-313731

The PPO held that there are similar and conflicting trade marks such as Atlantic R-141375 for goods in class 18, Atlantic IR-631190 and ATLANTIC IR-787876 for goods in class 03.

R-141375

The Voivodeship Administrative Court in Warsaw in its judgment of 7 April 2010 case file VI SA/Wa 21/10 dissmissed Atlantic’s complaint and upheld the contested decision. The Court ruled that in all cases where the problem of the similarity of the opposed trade marks arises, it is the result of two closely related issues, i.e. the similarity of signs and the similarity (homogeneity) of goods/services for which the signs are applied for, registered or used. Both these factors determine the scope of trademark protection (citing M. Kępiński [in:] Niebezpieczeństwo wprowadzania w błąd odbiorców co do źródła pochodzenia towarów w prawie znaków towarowych, ZNUJ PWOWI zeszyt no 28 of 1982, p. 10). The VAC held that the convergent elements of disputed signs have crucial meaning for the buyers and such conclusion is justified from a psychological point of view, since the purchaser keeps in mind only a general representation of the sign for which is he or she looking for. Therefore the buyer chooses a sign based only on dominant elements while ignoring differences.

Trade mark law, case VI SA/Wa 180/10

September 6th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 16 June 2010 case VI SA/Wa 180/10 held that in assessing the confusing similarity the PPO should not be limited to include only one component of a complex sign while comparing it with another trade mark. On the contrary, such a comparison is made by examining the signs as whole.

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 1873/08

July 20th, 2010, Tomasz Rychlicki

On 25 May 2005, the Polish Patent Office granted the right of protection for the word trade mark MIESZKO R-165555 for goods in Class 29. ZAKŁADY PRZEMYSŁU CUKIERNICZEGO “MIESZKO” S.A. filed a notice of oppostion. MIESZKO S.A. claimed infringement of its company name and identicality with its trade mark MIESZKO R-87813 registered with an earlier priority for goods in Class 30. The PPO dismissed the opposition and ruled that both trade marks are identical, but Mieszko is a male name of Slavic origin, and the goods differ to the extent that there is no risk of consumers confusion. The very similarity of the signs, however, cannot be a sufficient argument to invalidate the right of protection for the word mark.

The Voivodeship Administrative Court in Warsaw in its judgment of 17 March 2009 case file VI SA/Wa 1873/08 dismissed the complaint.

Trade mark law, case II GSK 496/09

July 2nd, 2010, Tomasz Rychlicki

The Polish Patent Office has refused to recognize the right of protection for a trademark PREMIUM DE-LUXE NEMIROFF IR-802093 registered for Nemiroff Intellectual Property Establishment because of its similarity to a series of earlier trade marks owned by the Pokish Company Wyborowa S.A. This series included word trade mark PREMIUM R-71602, PREMIUM VODKA R-82601, GOLD PREMIUM R-108603 and many others. Nemiroff filed a request for reconsideration claiming that the word “Premium” with respect to alcohol is often used to describe more accurately its class and quality and in this connection it has no distinctive character. Consumers are choosing alcohol based on its quality and the name of the manufacturer.

IR-802093

The Patent Office upheld the contested decision. The PPO explained that the most exposed part of the questioned trade trade is the word PREMIUM, because of its location, size and bright color in contrast to the soothing white-blue-gray color of the rest of the sign.The PPO stated that the word “Premium” is easy to remember, but it has rather poor degree of distinctive character, which are often used to denote exceptional quality. The figurative elements of the mark in such a situation may not be sufficient to exclude the likelihood of misledading the purchasers as to the origin of the goods, in particular, it will not help to exclude the associations between characters. Although the PPO agreed with the position of the parties as to the universality of the word “Premium” in trade, however, the PPO also noted that in the strict sense it may be a distinctive sign in Poland, and it is the most exposed element in questioned trade mark. The broad and long-term use of it in the form of trade marks used by Wyborowa S.A. allowed it to acquire a secondary meaning. Given the above, the Patent Office found that in normal economic turnover PREMIUM DE-LUXE NEMIROFF may mislead the public as to the origin of the goods, as well as infringe the rights of protection of the owner of the opposed trade marks.

Nemiroff filed a complaint. The Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 27 November 2008 case file VI SA/Wa 1583/08 sided with PPO’s opinion. The VAC held that the Office properly decided that the questioned trade mark is similar to a series of earlier registered trade marks, all including the distinctive word element „Premium”, which created the risk of the public being misled.

Nemiroff filed a cassation complaint. The Supreme Administrative Court in its judgment of 23 March 2010 case file II GSK 496/09 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that the VAC erred in assessing the similarity between the opposing trade marks by focusing only on one element – the word “Premium”, without trying to explain its distinctive character as a designation of exceptional quality of a product. Then it would be difficult to talk about the fact that the earlier registered trade marks with the word “Premium” come from one source. The owner of a sign that has weak distinctive character must often tolerate the coexistence of the similar trade marks.

See also “Trade mark law, case VI SA/Wa 1133/10“.

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 II GSK 555/09

May 17th, 2010, Tomasz Rychlicki

This is the continuation of the story described in “Trade mark law, case VI SA/Wa 2376/08“. The Free Trade Union of Drivers of the Republic of Poland (FTUD) and its representative disagreed with the decisions of the Polish Patent Office and the Voivodeship Administrative Court, and filed a cassation complaint to the Supreme Administrative Court. The FTUD claimed that the drawing of an eagle included in its sign differs from the National emblem, because it has different colors and is on a different background. The Union also argued that the sign emphasizes its national identity, and not link with the state bodies. According to the Union, the PPO already registered many characters that consist of national symbols that were artistically altered. The refusal of registration of the questioned sign limits the competition argued the Union.

The Supreme Administrative Court in a judgment of 21 April 2010, case file II GSK 555/09, dismissed the cassation appeal. According to the SAC the provisions of the IPL and the Act on Coat of Arms, Colours and Anthem of the Republic of Poland should be read together. Neither the emblem or image of the Eagle established as the emblem and symbols of the Republic of Poland shall not be subject to protection rights. This applies also to similar signs – said Judge Małgorzata Korycińska. The judgement is final.

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 VI SA/Wa 233/09

March 8th, 2010, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for 3MA R-171362 trade mark owned by the Polish company MARMA Polskie Folie Sp. z o.o. The proceeding were initiated by the 3M Company, the owner of 3M R-84046 and word-figurative 3M R-84047 trade marks. The American company has claimed the reputation of its signs and argued that the registration of 3MA R-171362 trade mark would bring its owner unfair advantage and it would be detrimental to the distinctive character and the reputation of 3M’s trade marks. The complaint of MARMA Polskie Folie Sp. z o.o. company was rejected by the Voivodeship Administrative Court in Warsaw in a judgment of 9 October 2009, case file VI SA/Wa 233/09.

The VAC ruled that in the absence of a legal definition of the reputation it was the legal doctrine and the courts who have defined the essential criteria for determining the reputation of the trade mark. Accordingly, the reputation of the trade mark is associated with the established opinion among customers about the characteristics of the goods bearing the mark. The reputation is not a simple consequence of the use and circulation of a trade mark, but it’s also a well-established and deeply rooted image in the consciousness of buyers of vital goods. The reputation of a trade mark is a result of the care for the high quality of products, the consistent preservation of a sign on the market by long and intensive advertising. An established reputation of a trade mark occurs when the quality of the goods bearing the sign satisfy customers who can easily recognize it and connect with the goods marked by the proprietor, even if it means that the goods are placed on the market for the first time. The reputation of a trade mark means its attractive value of advertising, the positive perceptions of the goods bearing the sign. In assessing whether the sign is reputed, one cannot take into the account only the degree of knowledge of a sign among the customers and the extent and intensity of advertising of goods bearing the sign, but also the quality of these goods. Prizes and certificates awarded for the goods bearing the sign, expert opinions and presentation of the goods at trade fairs in order to promote products also show the reputation of the trade mark. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

See also “Poland: proving the fame of a trade mark“.

Pharmaceutical trade marks, case VI SA/Wa 1176/09

February 17th, 2010, Tomasz Rychlicki

On 4 June 2002, the Polish entrepreneur Wojciech Soszyński from Sopot applied to the Polish Patent Office for the right of protection for OCERIN Z-251142 trade mark in class 5 for goods such as oral pharmaceutical preparations in a form of granulate, drops, capsules, emulsion, herbal blends, pastes, pills, powder, syrup, suspensions, gels, pharmaceutical preparations for mouthwashingin a form of aerosol, chewing gum, capsules, concentrate, drops, pills, pastes, liquids, powder, tablets, suspensions, gels, pharmaceutical preparations for dental purposes in a form of emulsion, paste, liquids, powder, tablets, suspensions, gels, pharmaceutical preparations for inhalation purposes in a form of aerosol, emulsion, gas, ointments, liquid, powder, tablet, suspension, gels, trachea and lung pharmaceutical preparations in a form of powder, solution, suspension, pharmaceutical preparations for skin care applied on skin and percutaneous in a form of medicated bath supplements, emulsion, cataplasm, collodion, concentrate, cream, ointment, dressing, paste, foam, plaster, liquids, powder, shampoo, suspension, gels, pharmaceutical preparations for eyes in a form of drops, creams, ointments, liquids, drops solvent, vaginal pharmaceutical preparations in a form of pills, tampons, vaginal douching suspensions, gels, powder, solvents for gel preparation, rectal pharmaceutical preparations in a form of suppositories, emulsion, capsules, concentrates, creams, ointments, foams, liquids, tablets, tampons, suspensions, gels, vesica and urethra pharmaceutical preparations in a form of washing liquids, powder for liquid preparation, gels, pharmaceutical preparations for ears in a form of aerosol-emulsion, solutions, suspensions, creams, drops, ointments, liquids, powders, rods, tampons, gels, pharmaceutical preparations for nose in a form of aerosol-suspension, liquids, drops, ointments, powders, rods, vaginal pharmaceutical preparations in a form of emulsion for irrigation, intravaginal tablets, intravaginal capsules, intravaginal creams, intravaginal ointments, intravaginal foams.

The Polish Patent Office (PPO) in its decision of 21 July 2008 refused to grant a right of protection. The PPO noted that BEIERSDORF AG from Hamburg reported observations as to the existence of grounds that may cause a right of protection to be denied. BEIERSDORF AG argued that OCERIN is similar to its EUCERIN IR-710661 trade mark applied for with the priority of 3 March 1999 for goods in class 5 such as cosmetics for medical purposes prepared in the form of creams, gels and lotions, all for the protection of dry skin, dermatologic preparations for prevention of allergy and skin ills, medical preparations for care, washing and beauty of hair, medical preparations for shower and bath purposes, medical sun tanning preparations, medical preparations against aging of skin, prevention skin preparations against UV radiation, and another word-figurative trade mark EUCERIN IR-765927.

The PPO found that the greater part of the opposed signs is identical and differs only in the beginning. Taking into account the specificity of goods in Class 5, the consumer may think that this is a variation of a single product or products with a similar purpose. It cannot be excluded that the consumer will shift the similarity (in the core and the ending of a sign) to the origin of goods, nor that differences in the beginning of a sign, will be shifted to the differences between the products, rather than differences in terms of their origin. Thus, in both cases, the signs causes the consumer the confusion as to the origin of goods.

The PPO also noted that both signs have no particular meaning in the Polish language. Consumers may try, or not, to give them some meaning. The PPO pointed out that it is very often in the market of pharmaceuticals that endings of signs or whole signs refer to the active substances. However, the average recipient has no knowledge of chemistry and pharmacy. Therefore, one may not know what components produce the substance or whether they are derivatives, and how it translates on the naming. The similarity of words is all, what is available to consumers and on such basis, they have to decide on the origin of goods. A large part of products listed in both lists of goods are those that are available without any prescription, and thus the support of pharmacist during its purchase cannot always be assumed. These products are also offered in hypermarkets and drugstores, where you cannot always count on the help of a sales assistant. But even if the pharmacist may give an advice on the composition of a product, it still does not determine the lack of the association between entrepreneurs. The assumption on the association between entrepreneurs should be concluded from minor differences in signs or other indications on the packaging and labeling, and such a situation, while comparing the signs, cannot be presumed, since the mark must indicate the origin of the goods itself.

The complaint to the Voivodeship Administrative Court (VAC) in Warsaw was brought by Oceanic S.A., legal successor of Wojciech Soszyński’s trade mark application. The VAC in its judgment of 7 October 2009, case file VI SA/Wa 1176/09, ruled that the risk of misleading the public as to the origin of goods decides whether the two signs are similar. The questions does not concern a personified trader/entrepreneur but it is all about the sign which has always to mark and indicate that the goods originate exclusively from the same trader. The unacceptable misleading of public as to the origin of goods is created by the similarity of goods and the similarity of signs.

Therefore, any doubts should be decided in favor of the proprietor of the trade mark with an earlier priority. This rule is a consequence of the belief that the entrepreneur who, for the same type of goods, chooses a sign that is similar to the trade mark with earlier priority, acts at its own risk and all uncertainty should be decided against him. A comparison of the lists of goods for EUCERIN and OCERIN trade marks indicates that these goods are similar. In the midst of these products are both cosmetics and pharmaceutical preparations of cosmetic and medicinal characteristics. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

See also “Polish regulations on pharmaceutical trade marks” and “Polish case law on advertising of pharmaceuticals“.

Pharmaceutical trade marks, case VI SA/Wa 844/09

February 2nd, 2010, Tomasz Rychlicki

On 4 February 2004, the Polish company Przedsiębiorstwo Farmaceutyczne LEK-AM Sp. z o.o. from Zakroczym filed to the Polish Patent Office (PPO) a trademark application for word sign GESTROL Z-275787 for the goods in class 5, cancer drugs. In a decision of 11 April 2008 the PPO refused to grant the right of protection. The PPO found that GESTROL is similar to the earlier registered trade mark (with priority date of 6 February 2003) – GESTROLTEX R-192945 registered for BIOTON S.A. from Warsaw, for goods in class 5, pharmaceutical preparations. Article 132(2)(ii) 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, served as the basis for the decision to refuse to grant a right of protection.

2. A right of protection for a trademark shall not be granted, if the trademark:
(…)
(ii) is identical or similar to a trademark 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,

LEK-AM filed a request for re-examination of the matter. The company argued that the sign applied for is intended to mark the anticancer drug. The active substance in this preparation is a chemical compound of the generic name (INN) megestrol. Under the decision of the Polish Minister of Health, GESTROL as a medicinal product received authorization for marketing. The Minister of Health has not found confusing similarity between GESTROL and GESTROLTEX. LEK-AM pointed out that both trade marks will be identified in the course of the highly specialized medical personnel. The PPO rejected the request and LEK-AM filed a complaint before the Voivodeship Administrative Court (VAC) in Warsaw.

The Court in a judgment of 12 October 2009, case file VI SA/Wa 844/09, ruled that the recipient, to whom the association between the marks GESTROL and GESTROLTEX may arise, is not only a person who is reasonably well informed and reasonably observant and circumspect, but it is also a person with high qualifications. Anticancer drugs are not bought and ordained without the intermediary of a doctor. For this reason, evaluation of other state administrative body, namely the Office for Registration of Medicinal Products, Medical Devices and Biocides and it is the ORMP who sets procedures and requirements for registration of signs for medicinal products, must be considered not only as a medical evaluation of the effects of the medication but also as the situation where the ORMP does not allow for the existence of two medicinal products with the same or similar name, which would prevent the identification of the product and the source of its origin at the medicinal products market. Of course, the court agreed with the PPO’s argument that the registration of the name of the medicinal product in the Office for Registration of Medicinal Products, Medical Devices and Biocidal Products at the Ministry of Health does not create an individual right to a specific drug name. Such a right exists from the time the right of protection for trademark is granted the IPL. It was obvious that the trade mark examination/registration proceedings before the PPO are independent of the proceedings before the ORMP, but it must be borne in mind that the earlier findings of one of the official bodies of Polish state cannot be neglected by another official body.

The VAC came to the conclusion that the contested decision of the PPO did not comply with the requirements of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments. According to article 107 §3 of the APC, the reasons for the administrative decision should include in particular: facts that the PPO considered proven, the evidence on which it relied and the reasons why the credibility of other evidence were denied the probative value, and the legal justification for the decision should be explain the legal basis for the decision, quoting the law. The VAC held the Polish Patent Office has not give sufficient reasons for, why it has refused to grant protection for a GESTROL trade mark.

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

See also “Polish regulations on pharmaceutical trade marks” and “Polish case law on advertising of pharmaceuticals“.

Trade mark law, case VI SA/Wa 274/09

December 3rd, 2009, Tomasz Rychlicki

In a decision of 20 June 2008, the Polish Patent Office (PPO) invalidated the right of protection for “Logos Travel Mark Śliwka” R-169277 trade mark owned by LOGOS TRAVEL MAREK ŚLIWKA SPÓŁKA JAWNA Magdalena Śliwka, Marek Śliwka. A request for invalidation of the right of protection was filed by Biuro Turystyki Związku Nauczycielstwa Polskiego LOGOSTOUR Sp. z o.o. from Warszawa – the holder of “LogosTour LT” R-74232 trade mark that was registered with priority from 15 July 1991. LOGOSTOUR company claimed that Mr Marek Śliwka cooperated with it since 1994 as a local representative and under a contract, which came into force on 1 January 1995 and the additional agreement of 9 April 2002 he was allowed to use the “LogosTour LT” trade mark. The PPO found that “Logos Travel Mark Śliwka” was applied in bad faith. Mr Śliwka filed a complaint to the Voivodeiship Administrative Court in Warsaw (VAC) arguing that there was no bad faith on his side and there is no likelihood of confusion with regard to disputed trade marks.

The VAC in a judgment of 23 June 2009, case file VI SA/Wa 274/09, ruled that the application for the right of protection for a trade mark is made in bad faith, despite the knowledge or ignorance, resulting from an absence of diligence, about the existence of another’s right or interest that is worth of protection, which can be threatened, and with the intention of harming these interests. The overall assessment of the likelihood of confusion as it concerns the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, taking into account, in particular, their distinctive and dominant components.

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

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 VI SA/Wa 1302/09

November 15th, 2009, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for “METAL-CHEM” R-138491 trade mark in part for goods in Class 7. The owner Przedsiębiorstwo Wdrażania Postępu Technicznego METAL-CHEM Spółka z o.o. from Gliwice filed a complaint against this decision, claiming inter alia that the PPO refrained from taking evidence from expert witness with regard to homegenity of the goods.

R-138491

The Voivodeship Administrative Court in Warsaw in its judgment of 13 October 2010 case file VI SA/Wa 1302/09 upheld the contested decision and ruled that the Adjudicative Board of the PPO, consisting of experts and the deciding cases in litigation proceedings may under the Article 84 § 1 of the APC appoint an experts witness to establish the facts on which the Patent Office has doubts, while the knowledge of the Board members is not sufficient.

Article 84
§ 1. If a case requires specialist information, a public administration body may consult an expert or experts for an opinion.
§ 2. An expert shall be excluded from proceedings on the basis of the rules set out in Article 24. The provisions regarding the hearing of witnesses shall also apply to experts.

It follows that the use of an experts witness should be incidental in nature as it was already discussed in by the Voivodeship Administrative Court in its judgment of 20 October 2006, case file VI SA/Wa 1075/06. Thus the PPO has the right but not the obligation, to refer to any opinion and it is also indicated by the optional nature of Article 84 § 1 of the APC. The PPO as a specialized authority that grants rights of protection for trade marks and other industrial property rights under the rule of law, is the only body that verifies under litigation proceedings, whether or not the exclusive right of protection for trademark meets statutory requirements. In this case, the task of the Board was the correct assessment of the similarity of the goods contained in the opposing trade marks, in which both parties used the terms in which the general range of meaning was available and is not misleading.

Trade mark law, case Sp. 211/08

October 25th, 2009, Tomasz Rychlicki

On 7 September 2007, the Polish Patent Office granted the right of protection for word-figurative trade mark “PERŁY I ŁOTRY” R-194932 applied for by HARPEL II Wojciech Harmansa for goods in Class 16 and 35. The PPO received a request for the invalidation of the right of protection that was filed by Sinonis Grzegorz Majewski who owns “PERŁY I ŁOTRY SHANGHAJU” R-164275 trade mark registered for goods in Class 09 and 41. Majewski applied for the registration on 2 February 2001. Majewski and Harmansa were members of a music band called PERŁY I ŁOTRY SHANGHAJU, but after some misunderstandings in the band, their paths diverged.

The Adjudicative Board of the Polish Patent Office in its decision of 7 April 2009, case file Sp. 211/08 invalidated the right of protection for “PERŁY I ŁOTRY” R-194932 trade mark in part in Class 35, recognizing the similarity of services.

Trade mark law, case VI SA/Wa 1018/08

September 24th, 2009, Tomasz Rychlicki

To coin a paraphrase, sex always sells when it comes to news reporting — so that was the reason why I chose such a topic. TVP S.A. – Polish public broadcasting corporation applied for registration for word-figurative sign SeXemisja (in English: SeX screening/broadcasting) in classes 9, 38, 41, Z-294432.

The Polish Patent Office (PPO) refused to grant trade mark protection because of the earlier registered word trade mark SEKSMISJA R-116200 (in English: sexmission) owned by Studio Filmowe Zebra in Warszawa. The right for protection was granted on 13 December 1999. It was registered in classes 9, 16, 35, 41 and 42. The PPO has ruled that TVP’s sign is similar to the SEKSMISJA trade mark mainly in the visual aspect. According to PPO, the graphics used in TVP’s sign distinguish the word “sex” and the middle letter “e” is not visible, so that the recipient can read it in the same way.

TVP has filled an appeal complaint before the Voivodeship Administrative Court in Warsaw (VAC), arguing that PPO erred while testing the similarity of signs. According to TVP’s representative the words “emisja” (screening/broadcasting) and “misja” (mission) differ conceptually and consumers will be able to distinguish between those two disputed signs without a risk of being confused as regards the origin of goods and services.

The Voivodeship Administrative Court in Warsaw in its judgment of 12 September 2008 case file VI SA/Wa 1018/08 annulled the contested decision. Judge Malgorzata Grzelak ruled that the PPO did not explain why visual similarity played dominant role in this case. The Court held that PPO should also specify what is the concept of a regular recipient of these signs. The Office has to assess the degree of attention of consumers of these goods and services and, in addition, the PPO must refer to all allegations raised by the TVP S.A.

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

Trade mark law, case Sp. 441/06

September 16th, 2009, Tomasz Rychlicki

Zino Davidoff’s attempted to invalidate the Polish trade mark for COOL WOMAN R-164594 registered in class 3 for goods such as for perfumery products including perfumes, toilet water, lavender water, cologne water and deodorants for personal use and owned by A&S Parfume Factory, a Polish company from Katowice.

The Swiss Company, being the owner of the Polish registered trade mark DAVIDOFF COOL WATER R-71968 and other International and Community trade marks, argued that COOL WATER brand had gained world renown and that the company incurred significant expenses in the brand’s promotion and advertising in Poland in the years 2002-2004. The Company from Fribourg alleged that A&S took the advantage of reputation of Davidoff’s trade marks.

A&S further argued that there was no risk of confusion because the word “cool” has no distinctive character and it appears in many trade marks registered in class 3 for cosmetics. There are 26 marks including the word “cool” that were registered under the Madrid Agreement procedure and 38 marks registered at the national level. The company from Katowice claimed that both elements had a clear meaning for buyers and that both of these English words were well-known to Polish consumers. A&S also argued that it is the Davidoff brand which has reputation – not its Cool Water trade marks.

The PPO in its decision case file Sp. 441/06 rejected the motion brought by Zino Davidoff. According to Polish Patent Office the word “cool” does not possess “the dominant meaning”, because it is included in different previously registered signs. The disputed marks, when assessed in their entirety, are not sufficiently similar to lead to a risk of consumer confusion regarding the origin of the goods. Therefore, the argument based on (the use of) the reputation of Davidoff’s trade marks was also regarded as unfounded.

The decision is not final. Both parties may appeal to the Voivodeship Administrative Court in Warsaw.

Trade mark law, case II GSK 986/08

August 31st, 2009, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 3 June 2009 case file II GSK 986/08 held that the provisions of Article 132(2)(ii) of the IPL does not refer only to the so-called direct risk, that is a situation where the similarity of the opposing trade marks is so close that the consumer may be easily confused but also a situation of the so-called indirect risk, which is based on the fact that the potential customer may mistakenly associate both trade marks.

2. A right of protection for a trademark shall not be granted, if the trademark:
(ii) is identical or similar to a trademark 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 risk of confusion as referred to in that provision of the IPL, includes therefore the likelihood of customer confusion as to the origin of the goods in the strict sense, as well as the risk of confusion as to the relationship of sources of origin of goods bearing the opposed trade marks. This is simply a situation where the average customer, following the association between two marks, may assume that a company using a similar trade mark as the owner of a prioro right , is in economiclegal or organizational relationships, that are essential for the manufacture, marking, and the introduction of a product to the market. This case concerned a decision on definitive refusal to recognize the protection of Tim IR-0809911 trade mark.

Trade mark law, case VI SA/Wa 2376/08

August 28th, 2009, Tomasz Rychlicki

On 21 February 2004, Wolny Związek Zawodowy Kierowców Rzeczpospolitej Polskiej (Free Trade Union of Drivers of the Republic of Poland) from Warszawa applied to register the word-figurative trade mark WOLNY ZWIĄZEK ZAWODOWY KIEROWCÓW in classes 4, 12, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.

In a letter dated 30 August 2006, the Polish Patent Office informed the applicant that, under article 131(2)(ii) and article 145 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, it can not be granted the right of protection for the applied sign.

Article 131
2. A right of protection shall not be granted for a sign, if:
(ii) it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organisations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organisations performing activities in vital public interests, where these organisations’ activities extend to the entire territory of the State or to a substantial part thereof, unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organisation, to use the sign in the course of trade,
(…)
Article 145
1. Subject to paragraph (2), where the Patent Office finds that the statutory requirements for the grant of a right of protection for a trademark have not been satisfied, it shall make a decision on refusal to grant the right.

2. Before the decision referred to in paragraph (1) is made, the Patent Office shall fix a time limit, within which the applicant is invited to react on the collected evidences and documents which imply the existence of grounds that may cause the right of protection to be denied.

The PPO pointed out that the mark contains a white eagle, which is protected based on the provisions of the Act on Coat of Arms, Colours and Anthem of the Republic of Poland (in Polish: ustawa o godle, barwach i hymnie Rzeczypospolitej Polskiej) of 31 January 1980, published in Journal of Laws (Dziennik Ustaw) No. 7, item 18, with later amendments.

In response to the objections raised by the Polish Patent Office, the applicant in a letter dated 11 September 2006, disagreed with the PPO’s assessment and claimed that the drawing of a bird included in the trade mark recalls an eagle, but it is a completely different bird to that depicted in the emblem of the Republic of Poland. WZZK pointed out the different colour of a bird, the colouring of his crown and claws, and the differences in the background. WZZK also noted that the mark includes the inscription “Wolny Związek Zawodowy Kierowców” (Free Trade Union of Drivers).

The Polish Patent Office in its decision of 22 June 2007 refused to grant a right of protection for the applied trademark. In a letter dated 23 July 2007 WZZK requested a retrial, calling for the reversal of the contested decision. In its decision of 19 September 2008, case file DT265/07, the Polish Patent Office upheld the contested decision of 22 June 2007. The PPO pointed out, that the provisions of article 131(2)(ii) of the IPL meet a double function. It is one of the provisions to guarantee the state, its bodies and institutions a monopoly on the use of state symbols. These symbols have a specific role in business transactions and are intended solely for the identification of specific nationals’ bodies or institutions, or documents derived or issued by them. Moreover, this provision assures the average consumer that the national symbols are used by the authorized institutions of the Polish state. The PPO also cited article 16(2) of the Act on Coat of Arms, Colours and Anthem of the Republic of Poland, according to which, it is permitted to place on goods intended for trading the emblem of the Republic of Poland or the colours in a stylized or artistically prepared form, but the PPO also said that these provision only authorize for the placement and they do not allow to grant the right of protection. WZZK filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw.

The Voivodeship Administrative Court in its a judgment of 6 March 2009 case file VI SA/Wa 2376/08 dismissed the complaint and ruled that pursuant to article 28 of the Constitution of the Republic of Poland, the emblem, colours and the national anthem of the Republic of Polish are protected by law and details regarding these symbols are provided in the Act on Coat of Arms, Colours and Anthem of the Republic of Poland. Article 1(1)(2) and (3) of this Act provides that the white eagle, white-red color and “Mazurek Dąbrowskiego” are the symbols of the Republic of Poland. The right and the duty of every citizen of the Republic of Poland and all state organs, institutions and organizations is to respect these symbols. These symbols remain under special protection provided in different regulations. The provision included in article 131(2)(ii) of the IPL excludes the possibility to grant the right of protection for the sign, not only when it contains an exact reproduction of the image of an eagle as provided in the Annex 1 to the Act on Coat of Arms, Colours and Anthem of the Republic of Poland but also when a sign contains a drawing of an eagle as described in article 2(1) of the Act.

The coat of arms of the Republic of Poland is the image of a white eagle with a gold crown on his head turned right, with unfolded wings and gold beak and claws, on a red field.

This provision allows for the registration of a trade mark which contains, among others the emblem, only in one case – the applicant has to prove to have the right to use such trade mark in trade. It was undisputed for the Court that the applicant had no such right. And for all readers interested in these issues I would like to recommend reading Grzegorz Pacek’s article entitled Marks as imitations of State emblems ‘from a heraldic point of view’ that was recently published in the Journal of Intellectual Property Law & Practice, Volume 4, Number 9, September 2009.

The rest of the story is described in the post entitled “Trade mark law, case II GSK 555/09“.

Trade mark law, case II GSK 896/08

May 31st, 2009, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 28 April 2009 case file II GSK 896/08 held that the question of similarity or dissimilarity of trade marks does not belong to the realm of substantive law, but is decided based on the regulations on administrative proceedings, because it involves questions of the facts, not law. From the viewpoint of the risk misleading the customer to confusion as to the origin of the goods, in principle, the whole sign, not its individual elements are examined.

R-164202

The Court ruled that during the proceedings in this case the company was trying to protect its trade mark “VANILA FASHION Izabella Kowalska” R-164202 based on the provision of Article 132(2)(ii) and not Article 132(2)(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 trademark shall not be granted, if the trademark:
(ii) is identical or similar to a trademark 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,
(iii) is identical or similar to a renown trademark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark. The above provision shall apply to well-known trademarks accordingly.

The Court noted that the protection afforded to in Article 132(2)(ii) of the IPL is weaker in comparison to a renown mark.

Trade mark law, case Sp. 424/06

May 10th, 2009, Tomasz Rychlicki

On 28 February 2005, the Polish Patent Office issued a positive decision and registered the word-figurative trade mark METAL-CHEM R-162449 in Class 6 for goods such as steel, in Class 7 for goods such as machinery and equipment for special treatment, technological lines for waste treatment as well as the teams line and accessories, machinery and equipment for the production of cobblestones, bricks and masonry, welders for pipes, in class 11 for electric heaters and in Class 40 for production of special machines, mechanical and thermal processing, casting of non-ferrous metal. It was applied for on 24 September 2001 by the Polish company Zaklad Urzadzen Metalowych “METAL-CHEM” Sp. j. A. Pochec, L. Szymanski, M. Aplas from Rudki.

R-162449

Another Polish company, Instytut Inzynierii Materialów Polimerowych i Barwników (the Institute for Engineering of Polymer Materials and Dies), from Torun filed a request to invalidate the right of protection. The request was based on 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.

Article 129(1)(i)
Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

Article 131(1)(i)
Rights of protection shall not be granted for signs:
(i) whose use infringes third parties’ personal or economic rights,

Article 132(2)(i) and (iii),
A right of protection for a trade mark shall not be granted, if the trade mark:
(i) is identical to a trade mark registered or applied for registration with an earlier priority date (provided that the latter is subsequently registered) on behalf of another party for identical goods,
(iii) is identical or similar to a renowned trade mark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trade mark. The above provision shall apply to well-known trade marks accordingly.

The company from Toruń presented its trade mark METALCHEM R-51184 registered with an earlier priority on 12 April 1973. This trade mark was applied for on 15 May 1972, for goods in Class 6, 7, 9, 20 such as worm pumps, pumps, vertical and horizontal rotational pumps for aggressive liquids, valves, clamps, agitators, mixers, pressure-type apparatus made of stainless steel and carbon steel, containers for transporting granular substances, containers and tanks of plastics.

The PPO has invalidated METAL-CHEM trade mark in its decision of 29 January 2009 case act signature Sp. 424/06. The Adjudicative Board of the PPO has taken into account only arguments based on article 132(2)(ii) of the IPL. The Board acknowledged that METALCHEM trade mark has distinctive character and is successfully used at the market. As regards arguments based on article 132(2)(i), the Board held that both signs are identical, the separate spelling is not a significant argument and the goods are similar and complementary. The reputation has not been proven by the company from Toruń so the motion based on article 132(2)(iii) of the IPL was dismissed. The decision is not final.

Trade mark law, case II GSK 654/08

March 20th, 2009, Tomasz Rychlicki

On 29 December 2004, the Polish Patent Office registered the word trade mark DIX R-158898 applied for on 24 May 2001 by the Polish company Gold Drop in Classes 1, 2 and 3. On 20 December 2003 Gold Drop applied to register another word-figurative trade mark DIX also in Classes 1, 2 and 3. The PPO registered this trade mark R-160901 on 11 April 2005 accordingly.

R-158898

The French company Balenciaga from Paris opposed these registrations. The request to invalidate the right of protection was based on the provisions of Article 132(2)(ii) 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:
(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.

Balenciaga owned the word trade mark registration LE DIX R-152201 in Class 3. This sign was registered by the PPO on 8 May 2003 with priority from 10 June 1999. The French company claimed confusing similarity of the disputed marks because of the predominating DIX element. In addition to these arguments there was also similarity of good (cleaning preparations).

R-160901

The PPO invalidated both trade marks in its decision of 13 March 2007. The PPO agreed that the disputed signs were similar and that there existed the risk of misleading the public as regards the origin of goods. Gold Drop lodged a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 7 February 2008 case file VI SA/Wa 1787/07 rejected Gold Drop’s complaint in case of the trade mark DIX R-160901. As regards the similarity of goods, the Court could not agree with the assertion that the term “cleaning products” in this list of goods refers only to the category of cosmetics. In accordance with the terminology adopted in the Nice Agreement concerning the international classification of goods and services, and adopting by the Court of the language interpretation, it should be stated that the “cleaning preparations” refers to chemical products and have been clearly demarcated in the class 3 from the second group of goods that are intended for personal use, i.e. perfumery. In the Court’s view the restrictive interpretation of the term “cleaning preparations” only to the range of goods including body cosmetics would be invalid.

However, the Voivodeship Administrative Court in Warsaw (in a different composition of judges) in its judgment of 21 February 2008 case file VI SA/Wa 1789/07 agreed with Gold Drop’s complaint regarding the trade mark DIX R-158898. In the Court’s view, the PPO has omitted and it has not not determined, what is the relevant public in relation to which it is necessary to assess the likelihood of confusion. The PPO did not find if the relevant public was the average consumer in France or European consumers, or whether these are the goods from the so-called. “the higher shelves”, and the recipient is a demanding customer or whether the goods are intended for daily use. The evidence presented before the PPO did not allow to assume that the goods included in the list of disputed trade mark were homogeneous to goods the earlier trade mark was registered for.

Gold Drop filed a cassation complain before the Supreme Administrative Court against the VAC judgment of 7 February 2008 case file VI SA/Wa 1787/07. The SAC rejected the complaint in its judgment of 3 February 2009 case file II GSK 654/08. The Court held that Gold Drop has based its cassation complaint only on the breach of the Article 132(2)(ii) of the IPL, and the SAC confirmed that while evaluating the similarity of signs only factual findings decide the case, so it was necessary for Gold Drop to raise the plea of breach of the procedural law (administrative proceedings), which the company did not put forward and while deciding the case the SAC is limited to motions included in a complaint. This judgment is final.

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. 421/07

February 14th, 2009, Tomasz Rychlicki

On 18 April 2002 Polish entrepreneur Zaklady Chemiczne EMICHEM Michal Mierzwa from Poznan applied to register the word-figurative trade mark JAX in class 3 for goods such as washing preparations, body and hair care preparations, windshield preparations and washers, car-care preparations, stain removers, softening and bleaching preparations. The Polish Patent Office registered this trade mark R-171570 in its decision of 16 March 2006.

R-171570

Colgate-Palmolive Company, a Delaware corporation, New York (US), filed a request to invalidate the right of protection based on article 132(2)(ii) 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 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 US company claimed earlier word-figurative trade mark registration AJAX Floral Bouquet R-135207. Colgate-Palmolive argued that there exist a high a risk of misleading the public because the disputed trade marks shared visual, aural and conceptual similarities.

R-135207

The PPO accepted Colgate-Palmolive’s arguments and invalidated JAX trade mark in its decision of 20 February 2009, act signature Sp. 421/07.