Archive for: Art. 148 IPL

Trade mark law, case II GSK 146/13

May 7th, 2014, Tomasz Rychlicki

On September 2007, Mr Jarosław Spychała applied to the Polish Patent Office for the right of protection for the word trade mark LEGO-LOGOS Z-330692 for services in Classes 35, 36 and 41. The PPO informed the applicant that his trade mark is similar to series of signs registered and owned by LEGO Juris A/S. Mr Spychała argued that the applied sign is the neologism derived from the ancient Greek language, and the term LEGO simply means “to read, think or speak”, and the term LOGOS means “learning” in a broad sense. In academic and education circles the term LEGO-LOGOS is associated with a particular form of education in philosophy and in building moral attitudes. The mark is directed at people who wish to explore philosophy and knowledge.

The Polish Patent Office refused to grant the right of protection because the applied trade mark was similar to the word trade mark LEGO R-72961 that was registered with an earlier priority for almost similar services. Mr Spychała filed a complaint against this decision and argued that the fact that compared signs share the same identical word element is not sufficient to refuse the protection for the later trade mark. The most important was the subject of the applied trade mark – a philosophical concept developed by the applicant and its popularization.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 1201/11 dismissed the complaint. The Court noted that the PPO properly made the comparison of goods and services and did not erred in comparison of both signs. The VAC agreed with the PPO that the word element LEGO can also mean to fold or to assemble, and thus relate to specific products – blocks that are marked by registered trademarks of LEGO Juris A/S. The Court pointed out that the applicant while describing the project of philosophical education under the name LEGO-LOGOS has also showed that he drew the expression of LEGO from Danish language. Regardless of what language (Ancient Greek or Danish) the dominant element LEGO was taken, it is a word that does not exist in the Polish language. Its importance in ancient Greek or Danish is not understandable for the average Polish recipient of goods or services. It may be related to the characteristics of goods – just blocks marked with this sign. Mr Spychała filed a cassation complaint.

The Supreme Administrative Court in its judgment of 11 March 2014 case file II GSK 146/13 dismissed it.

Trade mark law, case VI SA/Wa 1780/11

June 19th, 2012, Tomasz Rychlicki

The Polish company NTT System S.A. applied for the right of protection for word trade mark NTTonLine Z-330715 for services in Class 35. The PPO noted that the entry in the list of services such as “management of the licensing of goods and services to third parties”, was placed in the trade mark application in Class 35. The PPO ruled that it is a very general term, referring to all goods and services. Meanwhile, according to International Classification of Goods and Services “licensing of industrial property” and “licensing of computer programs” should be classified in class 45. Therefore, PPO asked for clarification of the original term – so as to eliminate any doubt regarding the scope of protection of the trade mark NTTonLine, because the general reference to all goods and services could in fact raise the risk of inclusion of general terms that belong to the different classes. NTT System did not submit any additional documents or corrections and the PPO discontinued the examination proceedings. NTT filed a complaint against this decision, and later withdraw it.

The Voivodeship Administratice Court in its order of 8 December 2010 case file VI SA/Wa 2122/10 was required to examine whether such withdrawal is not intended to evade the law or if it would leave in force a void decision. The Court ruled that that withdrawal was acceptable in this case. NTT filed a cassation complaint, and the Supreme Administrative Court in its order of 9 August 2011 case file II GSK 1127/11 annulled the order of the VAC and returned the case for further reconsideration.

The Voivodeship Administrative Court in its judgment of 5 April 2012 case file VI SA/Wa 1780/11 found that this time NTT System did not request the withdrawal of the complaint, and demanded a hearing. The Company argued that it is not true that the services listed in Class 35 are general in nature, and they need to be clarified, because for all general terms in the Nice Classification are marked with an asterisk, and only such terms should be clarified. Moreover, the contested final decision of the Polish Patent Office violated the law as it was issued by an unauthorized person – an expert not having the appropriate authority to consider this particular case. Such authorization should be granted by the President of the PPO. The Court held that the most important is the recommendation that the particular text appearing in the alphabetical list should be used as the indication of goods or services, not a general term. And the mere fact that a specific good or service are listed in alphabetical order does not affect the individual decision of national industrial property offices on the possibility of registration of the mark for such goods or services. The wording of the list of goods and services must be clear not only for the applicant, but also for third parties who either may submit an opposition to the grant of the right of protection, or simply by applying or using the sign, they wish to avoid a collision with a similar trade mark with an earlier priority. The court considered the request of the PPO that was addressed to the applicant in order to clarify the list of services, as justified. The Court ruled that the President of the Polish Patent Office is empowered to authorize certain persons not only to make decisions on her behalf in certain matters, but also to select of experts or assessors to act in certain cases. The expert examining the case was properly authorized by the President of the PPO. Taking into account all the arguments, the Court dismissed the complaint.

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.