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Archive for: Art. 168 IPL

Trade mark law, case VI SA/Wa 452/10

July 19th, 2010, Tomasz Rychlicki

In 2009, the Polish Patent Office declared that the right of protection for REAL trademark owned by real SB-Warenhaus GmbH from Germany, lapsed partially. The German company requested for the suspension of the contested decision. The request stated that the contested decision would cause a negative economic impact for real SB-Warenhaus GmbH, which, through a Polish subsidiary, uses lapsed trade mark continuously since 1997. The German company has made far-reaching financial investments to build market position of REAL trade mark, in Poland – around 10 million PLN. In addition, the public awareness of the brand position, has not only financial backing but also social, because the company built on Polish territory large-area markets, which are operated under the name REAL, therefore, renaming the company and its markets would also affect the 13,500 employees. Given the increasing competition in the market, other competitors, could in good faith (or intentionally) use this trade mark. There was therefore a real risk that, until final completion of this case, the distinctive character of REAL trade mark would be weakened.

R-132135

The Voivodeship Administrative Court in its judgment of 15 June 2010 case file VI SA/Wa 452/10 decided to stay the execution of the questioned decision and ruled that if the decision of the Patent Office has not been suspended, REAL trade mark used by the Polish subsidiary could not be used, and others could exploit the position of this trade mark. The Court also agreed that financial outlays made for the creation and operation of REAL’s supermarkets, were large, and the scale of employment in these supermarkets and the necessary change of the company name and the supermarket, could adversely affect the situation of workers.

See also “Trade mark law, case VI SA/Wa 451/10“.

Trade mark law, case VI SA/Wa 451/10

July 17th, 2010, Tomasz Rychlicki

R-132135

The Voivodeship Administrative Court in its judgment of 15 June 2010 case file VI SA/Wa 451/10 decided to stay the execution of the questioned decision and ruled that if the decision of the Patent Office has not been suspended, REAL trade mark used by the Polish subsidiary could not be used, and others could exploit the position of this trade mark. The Court also agreed that financial outlays made for the creation and operation of REAL’s supermarkets, were large, and the scale of employment in these supermarkets and the necessary change of the company name and the supermarket, could adversely affect the situation of workers.

See also “Trade mark law, case VI SA/Wa 452/10“.

Trade mark law, case II GSK 155/09

November 30th, 2009, Tomasz Rychlicki

The 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.

Z-275675

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 668/08

March 28th, 2009, Tomasz Rychlicki

On 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. Nestlé was aware that there is a possiblity that the Polish Patent Office rejects the application because of the earlier registration of the trade mark CHOKELLA R-85159, registered with priority on 30 August 1993 for the Company Kelsen The International Bakery A/S from Norre-Snede, which during Nestle’s application was under the grace period based on the provisions of Article 132(1)(iii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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 right of protection for the trade mark CHOKELLA R-85159, 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 the provisions 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 the provisions afforded in the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in 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) of the IPL 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 Supreme Administrative Court in its judgment of 21 January 2009 case file II GSK 668/08 annulled the ruling of the Voivodeship Administrative Court. First, the Court noted that the Supreme Administrative Court in its judgment of 23 April 2008 case file II GPS 1/08 held that according to the provisions of Article 169(1)(i) of the IPL, 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. See also “Trade mark law, case II GPS 1/08“. The SAC ruled that aforementioned judgment can not be excluded from the examination of 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). The 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 transferred by the declaratory act on the life of the party in the family and the society. The Court held that similarities 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.

Trade mark law, case II GSK 127/07

October 5th, 2007, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 20 September 2007, case file II GSK 127/07, unpublished, ruled that other requirements must be satisfied while starting the invalidation proceedings, and the other in the request on the lapse of a right of protection for a trademark. The right of protection for a trademark right may be invalidated in whole or in part, if it has been granted contrary to the statutory conditions (as defined in article 164 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), and the lapse of a right of protection is dependent on the occurrence of other, well-defined conditions (articles 168 and 169 of the IPL). Also the implication of each of these decisions differs – at the ex tunc in the invalidation proceedings, and after fixed period or the occurrence of a particular situation constituting a condition of the lapse.

Trade mark law, case II GSK 248/06

July 21st, 2007, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 55/06“. Piotr Dyszkiewicz and Zbigniew Anozy – both partners of civil partnership, unsatisfied with the judgment of the Voivodeship Administrative Court in Warsaw, have filed a cassation complaint.

Z-223847

The Supreme Administrative Court its judgment of 22 March 2007 case file II GSK 248/06 repealed both the questioned order of the Polish Patent Office and the judgment of the VAC. The SAC based its conclusions on procedural matters. According to the SAC, all problems discussed by the VAC with regard to the co-ownership of THERMO SHIELD Z-223847 trade mark application and partners who quit the cvil partnership, were not a procedural issue, but it concerned very important merits, namely, who should be granted the right of protection for the trade mark for certain goods. The provisions the IPL does not provide that such an issue could be resolved by the order in the proceedings, i.e. before the adoption of a decision of the Polish Patent Office on the termination of the proceedings regarding THERMO SHIELD Z-223847 trade mark application. This is a substantive matter and a conclusion can be taken only in the decision of the PPO issued in proceedings involving all the people who made the trade mark application as partners of the civil partnership.

Trade mark law, case VI SA/Wa 55/06

July 21st, 2006, Tomasz Rychlicki

On 8 September 2000, partners of a civil partnership, filed an application for word-figurative trade mark TERMO SHIELD Z-223847. This application was filed by natural persons, since these are separate entrepreneurs. Civil partnership is formed through an agreement by the partners to achieve a common business purpose. The civil partnership does not qualify as an entrepreneur. The term entrepreneur should be used only to partners of a civil partnership, and not to a partnership itself. Civil partnership has no legal personality and has no legal capacity (a capacity to be a party in legal proceedings).

Z-223847

Two partners resigned. The other filed a request to the Polish Patent Office (PPO) to make change in the Trade Mark Register with regard to persons entitled from the application. The PPO refused to make such changes. The Polish Patent Office has recognized that this was only a withdrawal from the agreement concluded between individuals. The individual partners are separate entities for the PPO and others, and the right to the applied trade mark is a co-ownership/joint tenacy. The withdrawal of two partners can not affect the change of the holder of the trade mark application according to article 162(1) 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.

Article 162
1. The right of protection for a trademark may be assigned or be subject to succession. The provisions of Article 67(2) and (3) shall apply accordingly.
1¹. The right of protection for a trademark may be transferred to the organizations referred to in Articles 136 and 137 as a collective trademark or collective guarantee trademark respectively or to a number of entities as a collective right of protection.
1². Transfer of the right of protection, referred to in paragraph (1¹) may be effected only with the consent of the parties who enjoy that right.
1³. Entry in the trademark register of the transfer of the right of protection, referred to in paragraph (1¹) after the regulations governing use of the trademark, referred to in Article 122 (2), Article 136(2) or Article 137(1) have been submitted.
1⁴. A collective right of protection may be transferred to a single party as a right of protection for a trademark.
2. (deleted)
3. The right of protection for a collective trademark may be assigned as a joint right of protection to the undertakings grouped in the organisation referred to in Article 136. The contract of assignment shall determine the rules governing the use of such trademark to the extent to which it is practised in respect of the regulations referred to in Article 122(2).
3¹. A collective right of protection may be transferred to the organizations referred to in Articles 136 and 137 as a collective trademark or a collective guarantee mark. A contract for the transfer of the right should specify the rules governing use of that trademark to the extent as it is provided for in respect of the regulations referred to in Article 136(2) and Article 137(1) respectively.
4. The right of protection for a trademark may also be assigned in respect of certain goods for which the right of protection has been granted, if the goods for which the trademark remains registered on behalf of the vendor are not of the same kind. Once assigned, the right in question shall be dealt with as independent of the right enjoyed by the vendor.
5. The contract of assignment of a share in the joint right of protection shall be valid subject to the consent given by all of the joint owners.
6. Paragraphs (1), (3) to (5) shall apply accordingly to the right deriving from an application filed with the Patent Office, for which no right of protection has yet been granted.

The basis for the change of the persons applying for trade mark protection should be a waiver or transfer of this right. In this case, it did not happen. The PPO does not intervene in the mutual settlement between the partners. It is an internal matter of their contractual relationship.

Two dissatisfied partners filed a complaint with the court. The Voivodeship Administrative Court in Warsaw in its judgment of 13 April 2006 case file VI SA/Wa 55/06 has recognized that all partners of the civil partnership applied for protection of the trade mark in question. The Court agreed with the PPO, that the mere resignation of the two partners may not affect the change of the holder of the trade mark application. The basis for the change in Trade Mark Registry may be the court order on the settlement between the partners in the property (the right of protection for a trade mark is the economic right), or the waiver of the right to trade mark application or its disposal or transfer. This requirement follows from articles 67(2), 162(1) and 168 of the IPL.

Article 67
1. The patent may be assigned or be subject to succession.
2. The transfer contract shall be in writing on pain of invalidity.
3. The transfer of a patent shall be binding on third parties as from the date of its entry in the Patent Register.

Article 168
1. The right of protection for a trademark shall lapse:
(i) on expiry of the term of protection for which it has been granted,
(ii)on surrender of the right by the owner thereof before the Patent Office, with the consent of the parties having their rights therein.
2. The surrender of the right, referred to in paragraph (1)(ii), may also concern only certain goods for which the right has been granted (restriction of the list of the goods).
3. The surrender of a share in the joint right shall result in the transfer of the share on behalf of the other joint owners, proportionally to their shares.
4. Subject to paragraph (3), in the case referred to in paragraph (1)(ii), the Patent Office shall take a decision on the lapse of the right of protection.

The Court held that the IPL is a lex specialis in relation to the Civil Code. The PPO would infringe on the rights of partners the civil partnership if it has made changes to the Trade Mark Registry with regard to entitled persons, only on the basis of changes in composition of the civil partnership. The settlement between the partners is not a cognition of the Polish Patent Office. The order of the PPO does not create the composition of the civil partnership by establishing that the partners who left are engaged in representing the company. Only the agreement on the civil partnership determines who is a partner of such a civil partnership. The order of the PPO concerns only their right to the application for the grant of a right of protection for a trade mark. This right has the nature of co-ownership/joint tenacy of all partners, unless it is regulated different as described above, i.e. by he settlement between the partners in the property, or the waiver of the right to trade mark application or its disposal or transfer.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Trade mark law, case II GSK 248/06“.