The Voivodeship Administrative Court in Poznań in its judgment of 28 Jue 2011 case file I SA/Po 210/11 held that a subsidiary company is allowed to depreciate trade marks that were transferred to it as an apportionment, starting from the first day of a month, after one month the Polish Patent Office has granted the right of protection for these signs.
Archive for: Art. 153 IPL
Tax law, case I SA/Po 210/11
September 26th, 2011, Tomasz RychlickiTrade mark law, case II GSK 779/09
December 1st, 2010, Tomasz RychlickiThis is the continuation of a story described in “Trade mark law, case VI SA/Wa 121/09“. HOUSE Spółka z o.o filed a cassation complaint. The Supreme Administrative Court in its judgment of 23 September 2010 case file II GSK 779/09 dismissed the case. The Court agreed with the VAC that ICT had the status of “owner” of the trade mark within the meaning of Article 161 of the IPL in connection with Article 6 septies of the Paris Convention although ICT at the date of the application of the questioned trade mark, i.e. on 11 March 1994, was not entitled under Article 161 of the IPL to XL XAVIER LAURENT IR-763083 trade mark, since the registration has been granted on 23 September 1999, and the protection of international registration lasts until 10 July 2001.
The SAC ruled that the provisions of Article 8(1) of the TMA concerns the substantive conditions of registration of the mark (it is not allowed to register a sign, which is contrary to the law or the rules of social coexistence) and it was referred to in Article 29 of TMA as a basis for invalidation of the registration of the trade mark, if the conditions provided in Article 8(1) were met. However, Article 161(1) and (2) of the IPL concerns only a request (claim) for invalidation of the right of protection.
Article 161
1. To the extent as follows from an international agreement, where a trademark has been applied for protection by and on behalf of, or the right of protection has been granted for, an agent or a representative of the person enjoying the exclusive right to use that trademark in another country, that person may, if the agent or representative acted without that person’s consent, demand that the protection granting proceeding be discontinued or the right of protection revoked. He may also demand that the right of protection be granted on his behalf, or the right already granted transferred to him.
2. The right may not be demanded to be revoked or transferred, where the entitled person referred to in paragraph (1) has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use.
It was obvious for the Court that if the conditions mentioned in the Article 161(2) of the IPL were met, then there is no need to study the substantive grounds for invalidation of the registration, as referred to in Article 8(1) in connection with Article 29 of the TMA. It is in accordance with Article 161(2) of the IPL that the request for the invalidation or transfer of rights cannot occur if, for a period of five consecutive years, the holder referred to in paragraph 1, being aware of such use, did not object to the use of a registered trade mark.
Trade mark law, case II GSK 765/09
October 18th, 2010, Tomasz RychlickiThe 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.
Internet domains, case I ACa 1334/07
June 17th, 2010, Tomasz RychlickiThe District Court in Warsaw in its judgment of 29 August 2007, case file XVI GC 756/06 dismissed the complaint filed by “Euro–net” sp. z o.o. against the judgment of the Court of Conciliation for Internet Domains at the Polish Chamber of Information Technology and Telecommunications of 23 March 2006, case file 22/05/PA PDF file, in which the Court of Conciliation dismissed the “Euro-net” complaint against Rafał Falęcki in case of infringement of trade mark rights and unfair competition delict/tort concerning eurortv.com.pl domain name.
The Appellate Court in Warsaw in its judgment of 16 April 2008, case file I ACa 1334/07, DOC file, dismissed the appeal, although it also found that some of the allegations included in the complaint proved to be accurate. The Court of Conciliation violated the adversarial rule because it has conducted an investigation of evidence ex officio, by looking on web pages and performing a search for disputed words “euro” and “rtv” in Google. The Court has not made any survey protocol or notes. This was made personally by the arbitrator without a request of both parties, however, the parties have not raised any comment to that evidence. The Court of Conciliation should issue the provision of evidence, indicating the date and place to carry out, so the parties could participate in this investigation. However, the appeal did not contain any allegations as to the veracity of the abovementioned evidence. The court may conduct investigation of evidence ex officio and on its own initiative but it should do it only in situations of an exceptional nature.
The Appellate Court did not agree with the “Euro-net” that the circumstances in which the investigation of evidence was conducted required special knowledge, and therefore should be subject to expert opinion. The Court of Conciliation made only a visual overview of the web pages of the plaintiff and the defendant, to which it was not necessary to posses special knowledge in the field of IT. The Appellate Court held that since the issue of the case was the infringement of “Euro-net” rights of protection for trade marks that was allegedly made by Rafał Falęcki in the Internet, therefore the inspection of his websites was sufficient way to determine whether and how the defendant used plaintiff’s trademarks. The expertise is not needed for such action, because a regular Internet user usually does not have such knowledge. It was a regular Internet user who could be mislead, in particular by a risk of associating the domain name with a registered trade marks, as defined in article 296(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, 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. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(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;
However, there were no doubts for the Court that provisions of article 153 of the IPL mean that one cannot infringe the protection rights for a trade mark in the Internet.
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.
According to the Court, one cannot use signs (or its elements) or similar trade marks, in its Internet domain names, if its business deals with selling the same group of products. There was no question that the mentioned above rule belongs to the fundamental socio-economic principles of the legal order of the Republic of Poland. However, in this case, such conditions were not met, bacuse all signs constituting “Euro-net” trade marks and used by Rafał Falęcki lack distinctive character, there was no risk of confusion, and there existed the exclusion of protection of signs as set out in article 156(1)(ii) of the IPL.
1. The right of protection shall not entitle the right holder to prohibit third parties from using, in the course of trade:
(ii) indications concerning, in particular, the features and characteristics of goods, the kind, quantity, quality, intended purpose, origin, the time of production or of expiration of usability period,
There is one thing I wanted to add. I asked the Appellate Court in Warsaw to send me the judgment via e-mail. My request was based on the Polish Act on access to public information. On 14 June 2010 I received an e-mail from the Court.
W związku z wnioskiem z dnia 11 czerwca 2010 r. o udostępnienie informacji publicznej uprzejmie informuję, że opłata za udostępnienie treści wyroku Sądu Apelacyjnego w Warszawie z dnia 16 kwietnia 2008 r. w sprawie o sygn. akt I ACa 1334/07 wraz z uzasadnieniem – zgodnie z Zarządzeniem Nr 130/09 Prezesa Sądu Apelacyjnego w Warszawie z dnia 31 lipca 2009 r. – wynosi 8 zł (1 zł za stronę) – w wersji elektronicznej. Opłatę można uiścić w kasie Sądu, znakami sądowymi lub przelewem bankowym na konto Sądu Apelacyjnego w Warszawie nr 93 1010 1010 0404 1322 3100 0000 z dopiskiem ” informacja publiczna Adm. 0137-119/10″.
I was informed that according to the Decree No 130/09 of the President of the Appellate Court in Warsaw of 31 July 2009, the fee for access to the judgment – is 8 PLN (1 PLN per page) – in the electronic version. I had no time to argue so I decided to pay. However, as you may remember from my post entitled “E-access to public information, case I C 19/10“, price-lists and flat-rate charges for making the public information available, may violate the provisions of the Polish Act of 6 September 2001 on access to public information.
See also “Polish case law on domain names“.
Trade mark law, case II GSK 155/09
November 30th, 2009, Tomasz RychlickiThe 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.
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 II GSK 708/08
June 26th, 2009, Tomasz RychlickiOn June 2007 the Polish Patent Office issued decision in which it invalidated the right of protection for the word-figurative trade mark Lech-Pol R-132854 (with the priority date of 1998), registered for goods in class 33 and owned by Mariusz Lech Przedsiebiorstwo Produkcyjno-Handlowo-Uslugowe LECH-POL from Lask. The right of protection was invalidated in part: for alcoholic beverages except for wine. The request was filed by the Polish company Fabryka Wódek POLMOS LANCUT S.A. from Lancut. The company from Lancut proved that it had a legitimate interest to have standing in proceedings before the Polish Patent Office based on the fact that on May 2005 Mariusz Lech filed before the PPO request to invalidate the right of protection for lech wódka R-145285 trade mark.
According to Polmos Lancut’s arguments, Mariusz Lech used the disputed trade mark only for products such as strong fruit wines, not imposing this mark on all other alcoholic beverages in Class 33. Mariusz Lech argued that, since mid-2001, he began efforts to start the production of vodka under the disputed trade mark. As a potential market for these articles he considered the teritory of Ukraine and the Republic of Poland. With this end in view, a design of bottles bearing these trade marks and labels were made. There were also discussions on the distribution of alcohol in Ukraine. However, with regard to the obstacles, the plan was not realized.
The PPO ruled that simply taking the preparatory steps which had no connection with a valid reason that could prevent the use of a trade mark does not constitute the grounds for dismissal of a request for invalidation of the right of protection.
Mariusz Lech filed a complaint to the Voivodeship Administrative Court in Warsaw but it was rejected in the Court’s judgment of 5 February 2008, case file VI SA/Wa 2019/07. A cassation compalint brought before the Supreme Administrative Court was rejected in a judgment of 16 April 2009, case file II GSK 708/08.
See also previous post entitled “Trade mark law, case VI SA/Wa 1042/08” as regards non-use and genuine use issues.
Trade mark law, case II GSK 668/08
March 28th, 2009, Tomasz RychlickiOn 25 January 2005, Société des Produits Nestlé S.A. applied to register the word trade mark CHOKELLA, Z-290315 in class 30, for goods such as: breakfast cereals, muesli, corn flakes, cereal bars, cereal flakes, cereal preparations, food products based on rice, flour or cereals, also in the form of ready-to-use meals. Being aware that it was possible that the Polish Patent Office would reject the application because of the earlier trade mark registration of CHOKELLA R-85159, registered with priority on 30 August 1993 for Kelsen The International Bakery A/S, Norre-Snede which during Nestle’s application was under the grace period based on article 132(1)(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.
2. A right of protection for a trade mark shall not be granted, if the trade mark is:
(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.
On 3 February 2005, Nestle filed before the PPO a request for a declaratory decision which would affirm the lapse of the rights of protection to CHOKELLA trade mark because of its non-use. According to Nestle, the declaratory decision should be effective from the date when an event which involves the effect of the expiry occured, i.e., at the date when the 5-year time period of non-use of a trade mark expired.
On January 2006, The PPO, dismissed the proceedings on the grounds that it was pointless, since before the date of Nestle’s request the rights of protections for CHOKELLA trade mark expired on 30 August 2003, under the law, due to the failure to extend the protection for the next ten years. It was unacceptable for the PPO to decide on the lapse of the rights of protecion for a trade mark, which did not exist at the date of application for such declaration. The PPO indicated that Nestle’s request was filed almost two years after the expiry of the CHOKELLA trade mark, so dismissal of the proceedings was justified because of the lack of subject that would be suitable for a substantive judgment. The PPO ruled that the right of protection shall expire on the date of the decision with effect from the date of filing a request to declare the right of protection for the trademark lapsed. So the decision has a constitutive nature and is applicable ex tunc.
The PPO did not agree with Nestle’s argument, and the construction and interpretation of article 169(2) of the IPL.
(…) the Patent Office shall make a decision on the lapse of the right of protection for the trade mark at the request of any party having a legitimate interest therein.
The PPO decided that this prejudge the declaratory nature of the decision on the lapse of the rights of protection and it differs from provisions afforded in 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 subsequent amendments.
Article 25.
The right deriving from registration of a trade mark shall lapse:
(i) on expiry of the term of protection;
(ii) on relinquishment of the right by the person entitled under the registration of the trade mark;
(iii) on failure to use the mark;
(iv) on loss of sufficient distinctiveness of the trade mark;
(v) on termination of economic activity on the part of the owner of the right deriving from registration of the trade mark.Article 26.
In those cases referred to in section 25, items ii) to v), the Patent Office shall cancel the right deriving from registration of the trademark.Article 30.
(1) Any person having a legitimate interest may submit a request for confirmation of lapse or a request for annulment of the right deriving from registration of a trade mark.
In the PPO’s opinion the provisions of article 169(2), beside different nomenclature of institutions (i.e. registration rights in the TMA and the rights of protection in the IPL), are identical and, even if the TMA did not indicate the date on which the lapse of registration rights or rights of protection, the legal doctrine and the case-law have established a method of calculating such date based on a specific event, for which it is considered the date of filing the request before the Patent Office to decide on the lapse of the right of protection for the trade mark.
Nestle filed a complaint before the Voivodeship Administrative Court in Warsaw, and argued that, contrary to the PPO findings, the IPL quite differently regulates the rules of declaration on the lapse of the right of protection for the trade mark. The Office shall issue a decision on the lapse of the rights of protection for trade mark and the provisions of article 169(2) indicates clearly that the decision is a declaratory act with a constitutive effect, that is, the decision itself, does not abolish the rights, but merely states that the right is expired under the law, which has effect for third parties from the time it was decided.
The Voivodeship Administrative Court in Warsaw in its judgment of 12 December 2007 case file VI SA/Wa 791/07 dismissed the complaint. The Court agreed with the PPO’s findings.
Nestle filed a cassation complaint before the Supreme Administrative Court. The SAC gave a very detailed ruling. First, the Court noted that on 23 April 2008, the Polish Supreme Administrative Court gave an important ruling in case II GPS 1/08. The SAC held that according to article 169(1)(i) of the Act on Industrial Property Law, the date of lapse of the right of protection for a trade mark is set on the last day of a period of five successive years, counting from the first date of non-use. The judgment was published in ONSAiWSA of 2008 r. No 5, pos. 77. See also “Trade mark law, case II GPS 1/08“.
The SAC ruled that aforementioned judgment can not be excluded from the determination on the matter of Nestle’s complaint. According to the Court it is accurate and consist of compelling arguments that are sufficient to answer the question formulated in Nestle case. The Court held that the similarity of the nature of “industrial property” within the meaning of property in the civil law context is in the exclusive use of goods that are understood as property, the beneficial use and disposal of such goods. However, the industrial property differs because its formal nature that is resulting from the relationship with a decision on granting the rights of protection, invalidation and the lapse of rights of protection. The decision to grant the rights of protection for a trade mark mark is clearly a constitutive act creating the legal status for a person. Declaratory decisions can not determine the occurrence of the new legal situation, but must refer to another fact or event occurring earlier in time and combine them with the rights or duties of the entity (legal or natural person).
Vague regulations of the TMA encouraged the formulation of views on the constitutive nature of the decision on the lapse of the registration rights of a trade mark under article 26 and 30 of the TMA. The SAC did not agree with two separate opinions issued by judges who were appointed to decide in case II GPS 1/08 and article written by professor Ryszard Skubisz and Marcin Trzebiatowski in which the authors provided examples on declaratory and constitutive nature taken from family law or labour law. According to the Court, the difficulties arise when the vague provisions of formal law create the need for an interpretation if, in connection with the answer to the question of when and on what basis (fact, event, operation), the decision has constitutive or declaratory nature. It was incomprehensible for the SAC to give the examples of judgments of nullity of marriage or fatherhood, the effects of which can not be transfered by the declaratory act on the life of the party in the family and the society. The Court held that similarites between industrial property and the instutution of the property taken from the civil law (property and ownership of tangible goods) should be taken into account to justify the recognition of decision on the lapse of the rights of protection as declaratory one instead of the principles of family law. The Court analyzed the nature of such decision in the scope of the property law rules i.e. the acquisition of property (perpetual use of the property or servitude of the ground) is decided by the declaratory ruling of the civil court following the expiry of the last day of the period when such possession is required by the formal law.
The SAC also stated that the day of filing the application for declaration on lapse of the rights of protection does not affect the date of expiry of the right, because it is initiating administrative action on the request of the parties. Whether and when the rights of protection shall lapse should be declared by the findings made during the proceedings for the purposes of the law.
The Supreme Administrative Court in its judgment of 21 January 2009, act signature II GSK 668/08 annulled the ruling of the Voivodeship Administrative Court in Warsaw.
Trade mark law, case II GSK 309/07
March 30th, 2008, Tomasz RychlickiThe Voivodeship Administrative Court in Warsaw in its judgment of 20 March 2007, case file VI SA/Wa 1998/06 ruled that the source of legal interest to seek a declaration on the lapse of the right of protection for a trade mark may be general rules of law that create the right of establishment of business activity (article 20 and article 22 of the Constitution of the Republic of Poland). However, any person requesting the Patent Office to make a decision on the lapse of the right of protection for the trade mark must prove, on pain of dismissal of such application, that the disputed trade mark limits business activity of an applicant, or it has negative impact the legal situation of the applicant. This case concerned ION R-110244 and ION WEST R-11020 trade marks.
The court deciding this case was aware that divergent views on the subject of legal interests are presented both in the legal doctrine and the case-law. One part of the legal doctrine and practising lawyers believes that a lack of legal interest justyfies the issuance of a refusal based on the formal reasons, and another part’s view is that in this case, the PPO should take the decision to discontinue the proceedings. The court cited the judgment of the Supreme Administrative Court of 7 September 1989, act signature SA/Ka 441/89 and its critical gloss written by Barbara Adamiak, published in OSP 1991/2/33.
The Supreme Administrative Court in its judgment of 25 January 2008 case file II GSK 309/07 ruled that the request for a referral to the Court of Justice regarding the question whether the article 12(1) of First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks allows Member States to introduce into the national law an additional substantial prerequisite regarding the legitimate interest, limiting the class of persons allowed to seek for a declaration on the lapse of the right of protection for a trade mark that was failed to be put to genuine use to those who are able to demonstrate their interest and depriving such possibility the business entities having the actual interest, including economic one, is unfounded.