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Archive for: Art. 169(1)(i) IPL

Trade mark law, case II GSK 839/10

January 17th, 2012, Tomasz Rychlicki

Nufarm Australia Limited, the owner of the trade mark DUAL SALT TECHNOLOGY R-164428 registered for goods in Class 5, requested the Polish Patent Office to decide on the lapse of the right of protection for DUAL IR-0534713 owned by Syngenta Participations AG. Earlier before, Syngenta opposed the registratin of the trade mark DUAL SALT TECHNOLOGY R-164428.

Syngenta requested the PPO to dismiss the request. The Company provided evidence of use of the trade mark DUAL IR-0534713. There were six copies of VAT invoices from the period from 2002 to 2006, of sale of goods bearing the sign “DUAL GOLD 960 EC”, and two newspaper articles concerning this product and the material safety data sheets of “DUAL GOLD 960 EC of August 2005.

The Polish Patent Office decided on the lapse of the right of protection for DUAL IR-0534713 and dismissed the opposition against the registration of the trade mark DUAL SALT TECHNOLOGY R-164428. Syngenta filed a complaint against this decision. The Voivodeship Administrative Court in its judgment of 19 March 2010 case file VI SA/Wa 1807/09 dismissed it. Syngenta filed a cassation compliant.

The Supreme Administrative Court in its judgment of 3 October 2011 case file II GSK 839/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC ruled that the cassation complaint can be based on the following grounds: a) the violation of substantive law by its erroneous interpretation or misuse, or the violation of proceedings rules, if it could affect the outcome of the case. The specific provisions of substantive law or procedural law, which were violated the court of first instance, should be indicated. Furthermore, it should be precisely explained What was the misapplication or misinterpretation – in relation to substantive law, or it should be demonstrated what was the significant impact of the violation of procedural law to decide the case by the court of first instance – in relation to the rules of proceedings. The Supreme Administrative Court cannot change or precise cassation complaints and their grounds, or otherwise correct them, due to limitations resulting from the mentioned rules. If the cassation complaint alleges violation of both substantive law and proceedings, as it was in the present case, the Supreme Administrative Court recognizes the allegation of violation of proceedings, in the first place.

The SAC decided the PPO has erred in its findings because it considered that the evidence submitted on, was from the years 2002-2006, while there was also an invoice from March 2007 on the case file, which was of the relevance to the case. It was a sales invoice of the preparation DUAL GOLD 960 EC 12 XI and DUAL GOLD 960 EC 4X 5 L. Surprisingly, the Supreme Administrative Court acknowledged, that the case facts showed that the trade mark DUAL GOLD lapsed on June 2006, so as a trade mark it ceased to exist on the market from that date (it was not registered). Since the trade mark DUAL GOLD ceased to exist in legal transactions after June 2006, the Polish Patent Office should examine whether this sign could be used in this situation, as indicated on the invoice of March 2007, or perhaps the invoice indicated the use of any other trade mark, for example, the trade mark DUAL, and therefore the Article 170 (1) of the IPL should be applied in this case.

Article 170
1. Subject to paragraph (2), the Patent Office shall dismiss a request for declaring the right of protection lapsed in the case referred to in Article 169(1)(i), if before the submission of the request genuine use of the mark has started or has been resumed.

2. Start or resumption of the use of the trademark after the expiration of an uninterrupted period of five successive years of non-use and within a period of three months preceding the submission of the request for declaring the right of protection lapsed, shall be disregarded, if preparations for the start or resumption of the use have been undertaken immediately after the right holder became aware of possible submission of such request.

3. Paragraphs (1) and (2) shall apply accordingly in the cases referred to in Article 169(7).

4. Loss of a right to use a sign or a symbol, referred to in Article 131(2) incorporated in a trademark shall not constitute a ground for non-making a decision declaring the right of protection for that trademark lapsed, if that sign or symbol ceased to be used in the trademark before a request for the declaration of the right of protection lapsed has been submitted.

In light of this evidence, which were the facts of this case, where a detailed analysis could affect the outcome of the case, it was premature by the court of first instance to rule and to say that, in this case that the genuine use of the mark has not started or has not been resumed, and PPO in this case did not erred in law, because it has analyzed all the evidence gathered. Considering other procedural allegations, the SAC held that administrative courts are not required in justification of its judgments to refer to each decision of Polish or European courts, that were cited by the author of a complaint. Such obligation can not be inferred from any provision of the Polish Act on Proceedings Before Administrative Courts. However, the administrative court should refer to these judgments, of which the applicant derives important arguments for the assessment of the case. In this case, the Court of first instance did not meet this requirement.

The SAC noted that the doctrine of law and case-law indicate that the trade mark proprietor may use its sign in an altered form in connection to the form of a sign that was registered. This alteration however, cannot apply to elements that decide on the distinctiveness of the sign, or may not lead to changes in represented form as a distinctive whole. See the judgment of the Supreme Administrative Court of 24 May 2006 case file II GSK 70/06. The SAC confirmed the high degree of freedom to dispose of a trademark by its proprietor, and cited the judgment of the Supreme Administrative Court of 24 June 2008 case file II GSK 251/08. See “Trade mark law, case II GSK 251/08“. The SAC found that the VAC has not sufficiently analyzed of all substantive rules in the context of this case. However, both situation where the violation of substantive law may happen, i.e., violation of substantive law by its incorrect interpretations or inappropriate use, refer only to cases where the facts of the case were established in no uncertain terms. Otherwise, the alleged breach of substantive law is at least premature. This situation took place in this case, because the author of the complainant cassation alleged in the first place the violation of the proceedings by the VAC. The violation of proceedings was based on the refusal by the court of first instance to repeal the decision issued by the Polish Patent Office, in a situation when that PPO did not adequately explain the facts of the case and did not examine in a comprehensive manner the whole of the evidence.

Trade mark law, case VI SA/Wa 538/11

July 9th, 2011, Tomasz Rychlicki

This is the continuation of the story described in “Trade mark law, case Sp. 457/08“. Unilever filed a complaint against the decision of the Polish Patent Office in which the PPO decided on the lapse of the right or protection of 3D trade mark R-134678 because of its non-use in the form in which the trade mark has been registered.

R-134678

The Voivodeship Administrative Court in Warsaw in its judgment of 22 June 2011 case file VI SA/Wa 538/11 overturned the decision of the Polish Patent Office and held it unenforceable. However, the Court did not even consider the arguments submitted by the parties. The decision was overturned because of the procedural issues. One of the members of the Adjudicative Board of the Polish Patent Office who was involved in taking the questioned decision did not sign it and later on she retired, therefore, the PPO was not able to obtain her signature. An administrative decision should include at least the name/designation of authority, the addressee of the decision, the conclusion and a signature of the person entitled to issue an administrative decision. If the document lacks a signature, it is not an administrative decision but a draft of such a decision. See also “Procedural law, case IV SA/Po 304/10“. Unilever’s case returns to the PPO where it will be decided on again.

Trade mark law, case Sp. 457/08

February 21st, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the registration of the industrial design “bottle with cap” Rp-2543 owned by Zakład Produkcj Opakowań Rosiński i S-ka sp.j. The request for invalidation was filed by Unilever, which claimed that the design infringes on its 3D trade mark R-134678. This 3D trade mark has the form of a bottle for liquids and it was registered on 20 March 2002 (with a priority of 29 January 1999) for goods in Classes 03 and 05 such as detergents, preparations and substances all for laundry use, fabric conditioning preparations, bleaching preparations, cleaning, polishing, scouring and abrasive preparations, soaps, deodorants for personal use, hand washes disinfectants, sanitary preparations, preparations for destroying vermin, insects and noxious animals, fungicides, germicides, bactericides, parasiticides, algicides, insecticides, weedkillers, deodorants, other than for personal use, air freshening preparations, insect repellents. The decision of the PPO was uphold by the Voivodeship Administrative Court. Rosiński filed a cassation complaint and the Supreme Administrative Court agreed with the Polish company and returned this case for reconsideration. The PPO will again decide on the invalidation of the industrial design in question.

Rp-2543

Meanwhile, during the battle over the industrial design, Rosiński requested the Polish Patent Office to decide on the lapse of the right of protection to 3D trade mark R-134678.

Rosinski claimed that the 3D mark in question must be treated, as the so-called weak sign. A bottle as such, is not, remarkably original shape significantly different from other packaging that are available on the Polish market for liquid toilet cleaners. Rosinski emphasized that the registered form of a trade mark significantly differs from the form that is actually used. Only the label, take than 50% of the bottle, and it is insignificant part of a packaging, that attracts attention of the buyer. Rosinski also noted that Unilever cannot argue and prove that the use of the mark in the form without additional elements is genuine use if the actually used a form of a registered trade mark (with labels) was subject to a separate registration (word-figurative trade mark Domestos SPRING FRESH THICK DISINFECTING CLEANER KILLS ALL KNOWN GERMS R-155952). Rosiński added that while the request does not seek to challenge the general idea of registrability of 3 dimensional trade marks such as the shapes of packages. However, such registration has its consequences. While, Unilever was allowed to register its bottle, and as a rule all the other manufacturers are allowed to do, these are weak signs, because such registration does not break the idea of a bottle for fluids.

R-134678

Unilever argued that Rosiński has no legal interest (locus standi) in requesting the lapse and presented a series of evidence on the genuine use of its 3D trade mark. The evidence included market research of 2009 on the knowledge of the DOMESTOS bottle shape amongst consumers, annual (1999-2000) spendings on television advertising of Domestos, black and white and color prints of television commercials, CD with TV ads recorded on it, color printings of press advertisements, series of judgments issued by French and German courts that were consistent with Unilever’s arguments.

R-155952

The Adjudicative Board of the PPO composed of five members (usually the board decides a case in a panel composed of the chairman and two members of a board, but five members’ board may be appointed for hearing complicated cases) in its decision of 20 December 2010 case file Sp. 457/08 ruled on the lapse of the right or protection because of non-use in the form in which the trade mark has been registered. The PPO agreed that Rosiński presented clear evidences on locus standi. All legal actions initiated by Unilever were directed against Rosiński’s freedom of business activity and this justified the request to the PPO to decide on the lapse. The PPO held that all submitted materials do not themselves constitute evidence of the genuine use of a bottle with a red cap without a label. Unilever did not show the place and time, extent and nature of use of its trade mark based on specific and objective evidence. The PPO noted that Unilever is the holder of other trade marks that have the same shape, especially word-figurative trade mark R-155952 and R-107207, IR-787372 and IR-798868 and according to the case-law, if there is a registered form of the trade mark with a label and it is genuinely used, then one cannot argue about the genuine use of another registered trade mark that lacks these additional elements. The PPO also ruled that evidence in the form of private public opinion research was dated on 2005 and did not constitute direct evidence of the genuine use of a green bottle with red cap but rather it tried to prove the renown of another trade mark with a label. Also, according to the case-law of the Polish Supreme Administrative Court, the reputation of a trade mark does not preclude the issuance of a decision on the lapse of this trade mark. The PPO ruled that frames from the TV ads and print ads were poor quality and were not in any way dated, It was also not proven whether the TV ads were aired in Poland. There has not also been proved that these ads were even broadcasted. As regards the print ads there were not provided titles of newspapers that the ads appeared nor numbers or dates of editions, and often other bottles of Domestos product appeared in these materials. Judgments of foreign courts that were submitted in this case are not very important considering that the law under which they were issued is not valid and binging in the Republic of Poland and each case before the PPO is examined individually based on specific facts of the particular situation. Also it was difficult for the PPO to consider these decisions to be persuasive, becasue the 3D sign must retain its individual character and it needs to designate the origin of goods and in this case Unilever had other trade marks of the same shape.

Therefore, in the opinion of the Polish Patent Office, Unilever has not produced evidence of the genuine use of the 3D trade mark R-134678 on the Polish territory during an uninterrupted period of five years after the date of the decision to grant a right of protection. This decision is not final yet. A complaint may be filed to the administrative court. HT goes to Grzegorz Pacek.

Trade mark law, case II GSK 1088/09

February 19th, 2011, Tomasz Rychlicki

Polish company Śnieżka Invest sp. z o. o. from Świebodzice requested the Polish Patent Office to decided on the lapse of the right of protection for the trademark GOPLANA MICHAŁKI R-139668 owned by Jutrzenka S.A. Śnieżka claimed that the questioned trade was not genuinely used in the period of five successive years after a decision on the grant of a right of protection has been taken. Śnieżka also owns michałki R-72668 trade mark and the company from Świebodzice argued that the market existence of GOPLANA MICHAŁKI sign would interfere its business.

Jutrzenka argued that there existed very serious reasons of non-use – the pending administrative proceedings for invalidation of its trade mark. Jutrzenka claimed that the use of the mark in the course of those proceedings would be irrational and it would expose the company to any future claims of Śnieżka. The PPO in its decision of 1 July 2008 no. Sp. 398/07 held that GOPLANA MICHAŁKI trade mark has lapsed. Jutrzenka filed a complaint. The Voivodeship Administrative Court in Warsaw in its judgment of 26 June 2009 case file VI SA/Wa 81/09 dismissed it. Jutrzenka filed a cassation complaint.

The Supreme Administrative Court in its judgment of 14 December 2010 case file II GSK 1088/09 dismissed the complaint and ruled that the case for invalidation of the trade mark registration does not qualify as an important reason for non-use thereof. The serious reasons should be factual and/or legal obstacles. These may be external events of force majeure nature that are impossible to predict and prevent. All circumstances relating to ordinary business risks, which concerns the current operations of each business cannot be deemes as such obstacles. A legal obstacle,preventing the use of a trade mark may be, for example, an individual administrative act prohibiting the use of the mark.

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 173/10

July 18th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 21 May 2010 case file VI SA/Wa 173/10 held that the statutory condition for the lapse of the right of protection is intended to eliminate the rights of protection granted to those signs that are not actually used in trade. The grant of the protection for a trademark is associated with the statutory obligation of genuine use of the mark for goods and services for which the trade mark is registered. It cannot be used symbolically, only to maintain the rights of registration. This case concerned the proceedings on lapse of the right of protection for “transpak gotuj ze smakiem” R-129729 trade Mark owned by Grajewski Zbigniew, Przedsiębiorstwo Produkcyjno-Usługowo-Handlowe TRANSPAK from Puszczykowo.

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 120/09

December 13th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 30 September 2008 case file VI SA/Wa 1042/08 dismissed a complaint against the decision of the Polish Patent Office on the lapse of the right of protection for APETITO IR-615850 trade mark in part concerning the goods in Class 29. See “Trade mark law, case VI SA/Wa 1042/08“. The owner – APETITO AKTIENGESELLSCHAFT – filed a cassation complaint.

The Supreme Administrative Court in its judgmet of 6 October 2009 case file II GSK 120/09 dismissed the complaint and held that when a person who shows its legitimate interest file a request for the invalidation of a registered trade mark becasue of non-use, the owner of the right of protection for this trade mark has to show the use of the mark in question or the existence of valid reasons justifying non-use. The scope of holder’s duty is defined within the scope of legal interest arising from a standing to file a request for the invalidation.

Trade mark law, case II GSK 156/09

December 12th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 16 October 2008 case file VI SA/Wa 927/08 dismissed the complaint against the decision of the Polish Patent Office on the refusal to decide on the lapse of the right of protection of GAP R-171132 and GAP R-171135 trade mark owned by GAP (ITM) INC. Przedsiębiorstwo Prywatne GAPPOL Marzena Porczyńska who was the applicant in the case before the PPO, filed a cassation complaint against this decision.

The Supreme Administrative Court in its judgment of 15 October 2009 case file II GSK 156/09 dismissed the compliant and held that pursuant to Article 315(1) of the IPL, the provisions of the old Trade Marks ACT are used to assess the effects of legal events occurring during their validity, while the effects of legal events that occurred after 22 August 2001, should be assessed under the provisions of the IPL, also when they related to the existing rights. To assess the effects of the expiry of the period/deadline that was required for recognizing the request to decide on the lapse of the right of protection as effective – if such a request was made after 22 August 2001, the provisions of the IPL should be used.

The Court held that in favor to adopt the date of issuance of the decision granting a right of protection as the starting point of the five-year period referred to in Article 169(1)(i) of the IPL, speaks the literal interpretation of this provision.

Article 169
1. The right of protection for a trademark shall also lapse:
(i) on failure to put to genuine use of the registered trademark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exist.

The SAC reached such conclusions because the “registered trademark” as referred to in this article, appears only after the decision in the matter was issued, and not on the date of filing a trade mark application.

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 708/08

June 26th, 2009, Tomasz Rychlicki

On 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 762/08

April 12th, 2009, Tomasz Rychlicki

Bauer Publishing House owns the word-figurative trade mark TWÓJ STYL R-69382 which is registered for goods such as printed matter, newspapers, magazines, books, packaging, clothing, shoes, advertisement services for third-party hotel and catering services. In 2007 the Polish Patent Office issued a decision on the lapse of the right of protection for TWÓJ STYL trade mark in class 25 for goods such as clothing and shoes. The Voivodeship Administrative Court in Warsaw agreed with PPO’s decision and rejected Bauer’s complaint in its judgment of 6 February 2008, act signature VI SA/Wa 1418/07. The Company filed a cassation complaint.

R-69382

The Supreme Administrative Court in its judgment of 12 March 2009 case file II GSK 762/08 has rejected Bauer’s cassation complaint. The SAC ruled that, according to Polish case law and legal doctrine, the “genuine use” of a trade mark should be directed towards the consolidation of the brand in the market and should seek for its awareness between consumers and competitors. The opposite to “genuine use” is usually the occasional action taken in order to avoid a non-use accusations and actions that are taken other than for purposes of actual business activity. As part of the obligation to make genuine use of a mark, Polish doctrine established the concept of “preparatory action”, which allows to preserve of the right of protection for a trade mark and possible refutation of the non-use allegations. Examples of such “preparatory action” are: a contract of the importation of goods bearing the trade mark, intense advertising in the media or a license agreement for trade mark use. These are activities that aim to genuinely use a trade mark and such actions should be temporarily and functionally associated with the future use of a trade mark. According to the PPO’s findings the owner of TWÓJ STYL trade mark sold clothing with this sign, but this activity ended in 1998 with the last sale of these products.

Trade mark law, case VI SA/Wa 1042/08

April 3rd, 2009, Tomasz Rychlicki

On July 2003 the French company Bongrain S.A. from Viroflay asked the Polish Patent Office to decide on the lapse of the right of protection for APETITO IR-615850 trade mark. The Polish Patent Office must consider whether there has been a lapse of the right of protection for a trade mark at the request of any party having a legitimate interest. The French company claimed its interest based on trade mark application to register the word trade mark APETITO Z-204328.

The request was based on articles 169(1)(i) 169(2) and 169(6) 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 Dziennik Ustaw (Journal of Laws) of 2001 No 49, item 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, item 1117, with subsequent amendments.

1. The right of protection for a trade mark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exist,
(…)

6. Where a proceeding for the declaration of the right of protection lapsed is initiated, the burden of proof that the trade mark has been used or that serious reasons for non-use of the trade mark exist shall be on the holder of the right of protection.

The Polish Patent Office decided on the lapse of the right of protection for APETITO IR-615850 trade mark in part concerning the goods in Class 29. The owner – APETITO AKTIENGESELLSCHAFT – filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 30 September 2008, case file VI SA/Wa 1042/08 dismissed the case and ruled that in order to aviod the situation of non-use of a trade mark, the use has to take place in the territory of the Republic of Poland. It has to have an unequivocal nature, as well as being real and serious, and should apply to a registered trade mark for goods and services covered. The actual use of a trade mark to prevent the lapse of the right of protection should consist of affixing the mark to goods and putting of such designated goods on the market within a specified period of time. The period of time is crucial for a revocation of the right protection. The preparatory steps to use the trade mark cannot be equated with the reasons to justify the occurrence of non-use of a trade mark. Taking certain preparatory steps which are without a connection with a valid reason that is preventing the use of a trade mark can not determine a dismissal of a request to decide on the lapse of the right of protection. The judgment is not final yet. APETITO AG filed a cassation complaint. See “Trade mark law, case II GSK 120/09“.

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. 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 Sp. 27/06

January 19th, 2009, Tomasz Rychlicki

On 9 February 2000, the Polish Patent Office granted the right of protection for the word trade mark PICKENPACK R-118206 applied for on 27 September 1996, the Polish entrepreneur Katarzyna Warzocha from Koniecpol, for goods in classes 29 and 30 such as frozen meat products, fish, poultry and game, frozen fruits and vegetables and frozen flour products.

R-118206

German company Pickenpack-Hussmann & Hahn Seafood GmbH from Lüneburg owned an international registration for the word-figurative trade mark PICKEN PACK IR-520553 in class 29 for goods such as meat, fish, poultry and game as well as cooked fruit and vegetables, cooked take-away dishes mainly consisting of meat, fish, potatoes and/or other vegetables; all these goods are deep frozen. The registration was granted in the Republic of Poland on October 2008. German company filed before the Polish Patent Office a request to declare the lapse of trade mark protection based on provision of article 169(1)(i) 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.

1. The right of protection for a trademark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons for its non-use exist,

Katarzyna Warzocha argued that she started to use the contested trade mark in the previous two years during talks with contractors interested in her offer. She provided information that the PICKENPACK trade mark had been used for frozen products, advertising flyers, business cards and offers of cooperation. Katarzyna Warzocha claimed that the goods labelled with this trade mark were present at the Polagra fair in the years 2001-2005. She also declared that she was able to provide statements of companies, which took supplies of frozen products poduced by her company. German company argued that this was not real evidence of actual use. On 6 November 2008, the PPO postponed the hearing in this case act signature Sp. 27/06 to supplement the evidence.