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Archive for: Art. 144 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 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 II GSK 746/09

August 10th, 2010, Tomasz Rychlicki

This is the continuation of a story decribed in “Trade mark law, case VI SA/Wa 2284/08” that concerned the trade mark HERITAGE FILMS. The Supreme Administrative Court in its judgment of 10 August 2010 case file II GSK 746/09 dismissed the cassation complaint brought by Zygmunt Piotrowski. The SAC held inter alia that the provisions of the TMA or the IPL do not provide in the course of the litigation proceedings lead by the Polish Patent Office, for the possibility to control the legality of the administrative proceedings that concerned the registration of a given trade mark. The legality of a decision granting the right of protection should be challenged in different proceedings.

Heritage

The Court noted that Mr Piotrowski confused the concepts of “invalidation of the registration right” or “invalidation of right of protection for a trade mark” with the annulment of the decision on the granting of the right. There are different grounds for such decisions and other procedures on their issuance, but in case of the breach of the provisions listed in Article 29 of the Trade Marks Act, those conditions may overlap, and only in this case they might be raised in the opposition proceedings. Consequently, the invaliditon of the protection right, although identical in its consequences, cannot be identified with the institution of the annulment of the decision on the granting of the right of protection.

Trade mark law, case VI SA/Wa 2284/08

April 20th, 2009, Tomasz Rychlicki

In 1990, Zygmunt Piotrowski who is a well-known Polish graphic artist, created the logotype that depicted the porch with columns and attic finial of the Penderecki’s house in Lusłwice with “heritage” inscription underneath. It was created for the Heritage Promotion of Music and Art company, whose founders were Elżbieta Penderecka and Janusz Pietkiewicz, later the director of the Polish National Opera. The logotype was adopted by the Heritage Films company that was founded in 1991 by Janusz Pietkiewicz and Lech Rywin after the withdrawal of Elżbieta Penderecka from Heritage Promotion of Music and Art company.

Heritage

At the request of Heritage Films, the Polish Patent Office in its decision of 27 June 2001, case no. Sp. 3/97 invalidated the word-figurative trade mark Heritage R-87806 belonging to the Piotrowski’s company. The Supreme Administrative Court in its decision of 14 December 2001 case file II SA 3446/01 confirmed the decision of the PPO, and dismissed the cassation complaint. The SAC clearly stated that the English word “heritage” is not a generic term for the services it was registered for, nor does it inform about its properties, quality or usefulness. Therefore “heritage” word can be used as a trade mark. It is not widely known or used in the market in order to identify such services as impresario and management consultancy services, the recruitment and placement of people for work for orchestra, soloists and artists of various disciplines of art. However, the court held the the company name could be an obstacle to grant the rights of protection for a trade mark. It was unclear for the SAC why the PPO’s decision lacks the explanation as to why the picture of the porch with the HERITAGE inscription makes the right to the company name (which was existing from 1991) impossible to be applicable as grounds for the invalidation. If the reason would be the recognition of the word HERITAGE to be protected by copyright law as the title, it should be better clarified. It was more necessary for the Court because the title could benefit from the copyright protection “only in very exceptional circumstances”.

The case went back to the PPO. On 17 April 2002, the Polish Patent Office invalidated of the right of protection of the trade mark HERITAGE R-87806. One more time Mr Piotrowski filed a complaint before the Supreme Administrative Court. The SAC in its judgment of 12 March 2003 case file II SA 1867/02 ruled that in accordance with the general rules, in the event of a collision between company name (the firm) and trade mark that has been registered with the “later precedence”, the priority shall be given to the right that existed earlier.

A year later, the Polish Patent Office registered the trade mark Heritage Films R-151966. Zygmunt Piotrowski has requested the invalidation proceedings argued that the trade mark Heritage Films infringes on his personal and economic rights afforded by the copyright law. The PPO rejected the request claiming the word “heritage” is a common expression and regardless of its importance for the artist it is not eligible for the copyright protection. Piotrowski filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 15 April 2009 case file VI SA/Wa 2284/08 ruled that the word “heritage” has no distinctive character and may be registered only in composition with some other description. And because it is not a subject of copyright protection the request had to be dismissed. Zygmunt Piotrowski has already announced he is going to file a cassation complaint.