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Archive for: Art. 143 IPL

Trade mark law, case II GSK 1261/10

April 9th, 2012, Tomasz Rychlicki

The Polish Patent Office in its decision of 29 January 2010 case no. DT-581/08 refused to grant the right of protection for the word-figurative trade mark FILIPETTI MONTENERO SPUMANTE DEMI SEC DALLA TRADIZIONE ITALIANA Z-298140 that was applied for by Domain Menada Sp. z o.o. for goods in Class 33. The PPO decided that this trade mark is similar to the word trade marks FILIPETTI R-101614 and R-140718 owned by Belvedere S.A. Domain Menada argued that it is a part of the Belvedere Group, and provided a letter of consent. Domain Menada filed a complaint against this decision but the Voivodeship Administrative Court in its judgment of of 21 June 2010 case file VI SA/Wa 710/10 dismissed it. See “Trade mark law, case VI SA/Wa 710/10“. Domain Menada filed a cassation complaint.

Z-298140

The Supreme Administrative Court in its judgment of 8 December 2011 case file II GSK 1261/10 ruled that the letter of consent was not binding and the PPO examined its effects in different aspects, based on gathered evidence, and it found that the letter of consent is not an exemption to grounds for refusing trade mark protection. The SAC stressed that the system of registration of trade marks under the Polish Industrial Property Law is to guarantee the protection of the interests of businesses and consumers. Under the present regulations, the Polish Patent Office may refuse to register a trade mark, despite the agreement between the professional entities that are active in business, due to the risk of misleading and confusion of consumers as to the origin of the goods from a particular entrepreneur. In this sense, the mere will of particular businesses does not directly create and shape the public policy. The PPO is a public authority that takes a decision on the registration of a trade mark, taking into account ex officio circumstances specified in the IPL. The PPO is therefore bound by the provisions of generally applicable laws, and these – as it was indicated above – protect the position and the consumer’s interest.

Trade mark law, case VI SA/Wa 635/07

October 27th, 2010, Tomasz Rychlicki

Okręgowa Spółdzielnia Mleczarska from Nowy Sącz requested the Polish Patent Office to disclose a copy of the Rules of the use of word trade mark bryndza Z–248134. Bryndza is a sheep milk cheese produced in Poland and other Eastern European countries. OSM from Nowy Sącz is also a producer of that type of cheese. In 2003, OSM applied for the right of protection for word-figurative trade mark TERMIZOWANA Bryndza sądecka Z-259477 and argued that the copy of Rules is required to analyze whether OSM may use the name bryndza for its product. The word trade mark bryndza Z-248134 was applied for by Regionalny Związek Hodowców Owiec i Kóz (Regional Union of Sheep and Goat Breeders) from Nowy Targ, as the collective guarantee trademark. Such trade mark can be registered for any organisation enjoying the status of legal entity, which itself refrains from using the trade mark, but undertakings being members of such organisation may use this trade mark if they follow the Rules laid down in the regulations governing use of trade marks adopted by the entitled organisation and are liable to control by that organisation to this extent. A holder of the right of protection for a collective guarantee trademark may not, without important reasons, deny the undertakings, which meet the conditions specified in the Rules, the right to use that trademark.

The PPO refused to disclose the Rules, because at that time, the case was under examination and at this stage of proceedings, all trade mark application’s files can be shared only with the consent of the applicant. OSM filed a complaint against the PPO. The Voivodeship Administrative Court in Warsaw ordered the PPO to reconsider the case. After rehearing, the PPO refused to disclose the Rules and decided that the OSM did not have legal interest (locus standi) in requesting the access.

The Voivodeship Administrative Court in Warsaw in its judgment of 26 June 2007 case file VI SA/Wa 635/07 ruled that the PPO is obliged to disclose the Rules, because OSM posses legal interest in this particular case. The Court noted that OSM is producing a food product with defined parameters bearing the name “bryndza”. The text of the Rules determines whether OSM will be able to continue and freely conduct its business activities in part on the production of sheep cheese. Or – on the contrary – without complying with the Rules will be infringing the trade mark.

Trade mark law, case VI SA/Wa 711/10

September 20th, 2010, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark PRODUCT OF ITALY FILIPETTI Casa Fondata nel 1922 VERMOUTH EXTRA DRY Ricetta Originale Filipetti Prodotto seguendo la tradizionale ricetta della Casa Filipetti Z-298152 that was applied for by Domain Menada Sp. z o.o. for goods in Class 33. The PPO decided that this trade mark is similar to the word trade marks FILIPETTI R-101614 and R-140718 owned by Belvedere S.A. Domain Menada argued that it is a part of the Belvedere Group, and provided a letter of consent. The Company filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 21 June 2010 case file VI SA/Wa 711/10 dismissed it. The Court held that in any case, the mere existence of links (relationships) between entrepreneurs belonging to the same capital group cannot be regarded as a guarantee of quality of product bearing the disputed trade mark.

Z-298152

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. Domain Menada filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 December 2011 case file II GSK 1245/10 dismissed it. The SAC held that the letter of consent was not binding and the PPO examined its effects in different aspects, based on gathered evidence, and it found that the letter of consent is not an exemption to grounds for refusing trade mark protection

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 808/10

July 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its order of 28 June 2010 case file VI SA/Wa 808/10 ruled that according to article 143 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, the Polish Patent Office shall publish a trademark application immediately after the expiration of three months from the date of filing of that application. As from the date of publication any third parties may acquaint themselves with the trademark determined in the application and with the list of the goods for which the mark is intended. They may also submit to the PPO their observations as to the existence of grounds that may cause a right of protection to be denied. Therefore, anyone has the right to submit comments to a trade mark application, but filing such comments does not make someone a party to the examination proceedings. These observations are only material that will be taken into consideration when examining the trade mark application

The VAC also noted that according to article 246 of the IPL any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a right of protection within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, and according to article 164 of the IPL, the right of protection for a trademark may be invalidated in whole or in part at the request of any person having a legitimate interest therein, provided that that person is able to prove that the statutory requirements for the grant of that right have not been satisfied. In such cases, the person is a party to the proceedings. This case concerned Gobired trade mark R-222675 owned by Przedsiębiorstwo Handlowo-Usługowe MAREL PLUS Leszek Marcinowski from Gdańsk.