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

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 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.

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

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.

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

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

Trade mark law, VI SA/Wa 1938/09

March 5th, 2010, Tomasz Rychlicki

This is a sequel to a story described in “Trade mark law, case Sp. 10/08“. In July 2009, the Polish Patent Office invalidated the right of protection for DAKAR R-174205 trade mark (registered for goods in classes 3, 27, 37), after considering the case on the basis of rich evidence supplied by both parties.

The PPO recognized inter alia the special nature of the opposed trade mark DAKAR IR-606861 (registered for goods in classes 4, 9, 12, 14, 16, 18, 21, 22, 24, 25, 26, 28, 30, 32, 34 and 41), which in addition to its traditional function of determining the origin of goods, is also the name of the famous rally raid. In explaining its position, the PPO used arguments on a function of a trade mark known as the “merchandising function” and cited D. Keeling, Intellectual Property Rights in EU Law: Free movement and competition law, Oxford, 2003. When examining the circumstances of the case, the PPO concluded that DAKAR IR-606861 trade mark is a reputed one. The PPO pointed to the existing methods for assessing the reputation – the absolute and relative. The first method takes primarily into account the percentage of a certain degree of knowledge of the trade mark on the market (as established by the Voivodeship Administrative Court in Warsaw in its judgment of 8 August 2007, case file VI SA/Wa 757/07). The relative method, in addition to knowledge of the trade mark, emphasizes other criteria, including market share in terms of quantity and value of goods sold, the scope and length of the advertising of the product marked with the sign, territorial and temporal scope of the use of the trade mark, licenses granted, the quality of the goods, the value of a sign in the assessment of independent financial institutions, the size of the expenditure incurred in connection with the promotion of the trade mark and the relationship to the price of substitute goods. Public opinion polls, prizes and awards, publications, press releases, rankings, reports, invoices and other business records, and various promotional materials can serve as evidence. The PPO cited the judgment of the COJ of 14 September 1999 in C 375/97, General Motors Corporation, the judgment of Supreme Administrative Court of 21 November 2006, case file II GSK 181/06 and the decision of OHIM of 25 April 2001 in case R 283/1999-3. See also my post entitled “Poland: proving the fame of a trade mark“.

When referring to the transfrontier nature of the reputation of a trade mark as adopted in the judgment of the VAC in Warsaw of 8 November 2005 case file VI SA/Wa 845/05 (VALENTINO) or in the judgment of the VAC of 13 March 2006, case file VI SA/Wa 1626/05 (LEXUS), the PPO found that the Paris-Dakar rally, although it takes place outside the Polish borders, has many fans, as evidenced by the data on viewing TV programs on the rally – from 550000 to over 1200000 people, which according to the PPO, proved a high popularity. When deciding on the unfair advantage, the Polish Patent Office found that in this case, the Polish company will be able to count on the positive reaction of customers without spending too much money on the promotions, because they will buy the goods by associating them with the sign of the French company and consequently with the rally organized by this company.

The Polish company DAKAR from Krasne filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in a jugment of 29 December 2009, case file VI SA/Wa 1938/09, ruled that the word Dakar also means the capital city of Senegal, and such argument escaped PPO’s attention during the analysis of all the facts and evidence gathered. In this aspect this sign also fulfills political and economic role. Therefore, the name of Dakar has long been known as an exotic name of the city and it should not be attributed exclusively to one company.

The VAC anulled the Polish Patent Office’s decision and decided that the decision was not subject to execution. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

The Polish TIFFANY’s trade marks saga continues

January 13th, 2010, Tomasz Rychlicki

Some time ago, I reported in posts entitled “Poland: Tiffany fought with Tiffany” and “Poland: cross-border reputation” about two American companies that were disputing trade marks with a TIFFANY element before the Voivodeship Administrative Court (VAC). The New York’s company argued inter alia that use of TIFFANY trade mark for goods such as footwear is a parasitic activity that uses another’s trade mark reputation and is bringing undue financial benefit to the holder of national registrations. The Company also stressed the fact that its trade mark is subject to protection under article 8 of the Paris Convention.

The VAC in a judgment of 24 July 2008, case file VI SA/Wa 238/08, dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeals against the Polish Patent Office (PPO) decision of 19 March 2007, case files Sp. 68/04 and Sp. 69/04, regarding the cancellation of the right of protection for word-figurative trade marks: TIFFANY R-128063 and “Tiffany & Broadway Inc.” R-128064 which were registered in class 25 for shoes. The VAC ruled that the application for the protection of the TIFFANY mark for goods in class 25 was contrary to the principles of social coexistence because it caused the risk of weakening the reputation of the trade mark. Given the fact that the shoes are cheap and readily available, there is a risk of dilution of the reputation of TIFFANY trade mark and it may lead to lose its attractiveness among the exclusive clientele of goods bearing this mark.

The company filed a cassation complaint to the Supreme Administrative Court (SAC). The Supreme Administrative Court in a judgment of 8 July 2009, case file II GSK 1110/08 ruled that the reputation of a trade mark is associated with its highly distinctive character. One could say that a reputed trade mark is the one that has a high ability to automatically trigger associations with the product for which it was registered. It is quite obvious that this ability will be weaker, adequately to the number of cases of using the same or similar trade mark as a designation of other goods that are originating from other entrepreneurs. With regard to the plea of weakening (the dilution) of the reputation of the Tiffany trade mark, i.e. weakening its individuality, based on the ability to cause the automatic association with the goods marked by this sign, such effects are also caused by unquestioned by the Court numerous registrations of identical or similar trade marks for other entrepreneurs for various other goods, as well as the use of this sign the name of very different businesses.

The SAC in a judgment of 8 July 2009, case file II GSK 1111/08 ruled that the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments, do not explicitly provide for any special protection for unregistered reputed trade marks. However, the doctrine and the Polish case law have already accepted the concept, that such protection could be provided under article 8(1) of the TMA.

A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;

In particular looking at the circumstance of “a trade mark conflicting with the principles of social coexistence”, from the subjective perspective – it was commented that, the “contradiction/variance with the principles of social coexistence” may concerning the conduct/behavior of the applicant. On the basis of such conclusions, the registration of a sign for the goods of another kind, if the registration was intended to use the reputation of another’s trade mark or it was a threat of such reputation, was excluded. A trade mark application that was filed contrary to the principles of social coexistence, was an application made in bad faith. The absolute grounds/obstacles that are provided against the registration of the mark as defined in article 8(1) of the TMA do not directly refer to the relationship between the sign that was applied for and any other competing trade mark, however, in accordance with the accepted interpretation of that provision, in case of the infringement of the rules of social coexistence, the obstacle could be the inappropriate behavior on the applicant (its actions done in bad faith). The assessment of applicant’s actions, who was motivated by the desire to use another’s trade mark reputation, should therefore be also varied according to circumstances of its motivation and, not only related to the trade mark itself.

The application for the right of protection for a trade mark that was made with the intent to use another trade mark’s reputation should be judged as an application that was made with the breach of the rules of social coexistence (application made in bad faith), regardless of whether it concerns a reputed registered trade mark or unregistered reputed trade mark.

The Polish case law, for instance the Supreme Administrative Court in its judgment of 9 May 2008, case file II GSK 506/07, that was previously reported in the post entitled “Trade mark law, case II GSK 506/07“, already established the rule that in a case of famous trade mark and its reputation, besides its recognition, it must be also characterized by the following characteristics:

market share/participation (both quantity and value of sold goods),
range and long-lasting of an advertisment of the product bearing a trade mark,
territorial and temporal range of use,
licences granted for trade mark use, quality of goods bearing a trade mark,
value of a given sign in assessment of an independent financial institution,
size and extent of expenditures spent on promotion of a mark,
the relationship on prices of substitute goods,
if (and to what extent) the mark is used by third party.

The SAC also noted that the Community case law provides several fundamental conditions for the recognition of a trade mark as a reputed one. These are:

knowledge of the trade mark by a significant group of customers,
the contribution of the trade mark in the market,
intensity and geographic scope of the use,
intensity matching of goods with the trade mark,
the size of expenditures on advertising and promotion of the trade mark.

The SAC cited inter alia the judgment of the Court of Justice of the UE of 14 September 1999 in case C-375/97, General Motors and the judgment of the Court of First Instance of 13 December 2004 in case T-8/03, El Corte Ingles and the CFI’s judgment of 25 May 2005 in case T-67/04, Spa Finders.

It is also clear that the reputation of a trade mark must be assessed and established in the country in which the protection is sought. If one would like to qualify a given trade mark as a reputed one in the Republic of Poland, then the argument of the international reputation of a trade mark is not sufficient. The basic circumstance for the recognition of the reputation of a sign in a specific country is to show by a person who is invoking this argument, the market share in terms of both quantity and value of goods sold.

The SAC held that provisions of the First Directive 89/104/EEC of 21 December 1988 do not preclude the possibility of granting the protection to unregistered reputed trade marks under the national law. Just to keep it in order, it is worth adding, that the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, provides in article 132(2)(iii)

2) A right of protection for a trademark shall not be granted, if the trademark:
(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.

for the protection of registered trademarks to the extent of the wording of article 4(4)(a) of the Directive. The trade mark application that was made in bad faith shall be rejected based on the absolute ground for refusal of protection based on provisions of article 131(2)(i) of the IPL.

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,

The SAC ruled that the provisions of article 4(4)(a) of the Directive cannot be interpreted as the maximum limitation for the protection of famous marks in the national law and it would be difficult to follow the arguments that the First Directive 89/104 is an example of the so-called “complete harmonization” citing the judgment of the Court of Justice of the European Union of 9 January 2003 in case C-292/00, Davidoff & Cie S. A.

According to the SAC, the court of first instance (VAC) wrongly assumed the bad faith of the applicant and it did not consider the fact that the applicant has conducted its business in Poland since 1990 with the use of the mark, and after about five years of its activity, the company applied for the registration of the mark. These circumstances certainly were not indifferent to assess the intentions and purposes of the applicant so the VAC should address them in the grounds of the appeal.

When deciding on the interpretation of article 8(1) of the TMA, which allows for the protection of not registered reputed trade marks in Poland, it should be also noted, that such protection have a special character because it applies to unregistered marks, and it is an exception to the principle of protecting industrial property rights by the registration process. This requires preserving much care, so that without proper justification, would not depreciate the importance of registering trade mark and it would not reduced the registration to a purely formal procedure that has no importance.

Therefore, the SAC annulled both questioned judgments of the Voivodeship Administrative Court and returned to the VAC for reconsideration in accordance with the conclusions reached and ordered the Polish Patent Office to pay Tiffany & Broadway Inc. Div. of Texpol Corporation 1200 PLN as reimbursement of costs of the cassation compliant.

Trade mark law, case Sp. 564/07

March 4th, 2009, Tomasz Rychlicki

On 4 November 2005, the Polish company Zakłady Farmaceutyczne Polpharma S.A. from Starogard Gdański applied to register the word trade mark PLUSPIRYNA in class 5 for pharmaceuticals products. On 21 July 2006 the PPO issued a positive decision and registered this trade mark (R-175822).

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 later 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 ASPIRIN R-41042 trade mark, 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. 10/08

February 10th, 2009, Tomasz Rychlicki

On 7 November 2002, the Polish company DAKAR from Krasne by/Rzeszów applied for word trade mark registration for DAKAR in class 3 for goods such as preparations for cleaning and maintenance of upholstery and body of a car, cosmetics for cars, in class 27 for goods such as car rugs and also in class 37 for services such as maintenance, repair, overhaul, cleaning, and car tuning. The Polish Patent Office registered this sign (R-174205) in its decision of 6 June 2006. French company (société par action simplifiée) PARIS-DAKAR filed a request for invalidation of the right of protection based on article 132(2)(iii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments.

2. A right of protection for a trade mark shall not be granted, if the trade 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 trade marks accordingly.

The French company claimed that the PARIS-DAKAR and DAKAR brands are widely known beacause of the world-wide popular rally which has around thirty years of tradition. In PARIS-DAKAR opinion the Polish company applied for trade mark protection knowingly. It works in the cars trade which may causing a risk of association between the registered mark and the French company’s brand and it has been done in order to use its popularity and reputation.

R-174205

The Polish company argued that, when it applied for trade mark registration, the indication Paris-Dakar was usually associated with the rally, not “Dakar” itself. In addition, there are other trade mark registrations consisting of Dakar word, which means that such sign may function on the market.

On 9 December 2008, the Polish Patent Office postponed the hearing in this case case file Sp. 10/08, and ordered the French company to supplement its evidence.