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

Trade mark law, case Sp. 304/05

September 26th, 2008, Tomasz Rychlicki

Eniro Polska applied for trade mark protection for PANORAMA FIRM in classes 16, 35 and 41 for goods and services such as telephone and address books, providing services to third parties concerning the promotion of goods and services, publishing services, assistance to third parties in the publishing business. The Polish Patent Office issued its decision on 6 September 1994 and granted the protection right, R-81181.

Panorama Firm-Marek Stefaniak from Sopot filed a request for invalidation of the right of protection for the PANORAMA FIRM mark, claiming that this sign had lost its distinctive character. The company from Sopot based its arguments on provisions of Article 169(1)(ii) 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:
(ii) on loss by the trademark of distinctive features for the reason that in consequence of the owner’s acting or negligence it has become, in the course of trade, a customary mark consisting exclusively of elements which may serve, in the course of trade, for indicating, in particular, the kind, quality, quantity, price, intended purpose of the good, the process, time or place of its manufacturing, the composition, function or usability of the good, in respect of the goods for which the trademark has been registered,
Both conditions must appear together, which means that the sign has to lose its distinctiveness and that the trade mark owner contributed to such process.

The Polish Patent Office, in its recent decision of 18 August 2008, act signature Sp. 304/05, rejected Panorama Firm-Marek Stefaniak’s request and ruled that Eniro Polska had proved that PANORAMA FIRM trade mark was in intensive use and that it was also broadly advertised and protected.

Trade mark law, case file II GSK 138/07

September 10th, 2008, Tomasz Rychlicki

Austrian company Red Bull GmbH has received trade mark protection right for its word mark based on international registration (IR-641378 A) on 19 March 1998 (notification of 17 September 1996), in almost all classes (3, 5, 12, 14, 16, 18, 20, 25, 26, 28, 29, 30, 32, 33, 34, 35, 39,41 and 42). Polish company – Przedsiebiorstwo Produkcji Lodów “KORAL” – applied for trade mark registration for RED BLUE word sign in class 30 (ice creams and other products) on March 2004, Z-277694. However, the Polish Patent Office recognized earlier priority of Red Bull’s trade mark and rejected the application.

Polish company (Koral company) requested a motion to declare the expiration of trade mark rights of Red Bull’s sign in class 30 claiming that Austrian company failed to put to genuine use of the registered trademark for the goods covered by the registration for a period of five successive years. The PPO agreed with “Koral” and declared the expiration of Red Bull’s trade mark in its decision of 30 October 2005 case file Sp. 199/04. Red Bull’s evidences of use that were based on the fact that Austrian company has put its trade mark on boxes with sweets which were later sent during different occasions to customers and business partners were found insufficient. The date on which five years period ended was set by the PPO on 9 July 2004 (the date on which the request for invalidation was filed). Both parties appealed to the Voivodeship Administrative Court in Warsaw. Polish company did not agree with PPO’s findings as regards trade mark rights’ expiration date and Austrian company claimed that PPO should consider reputation of its trade mark.

The VAC in its judgment of 7 September 2006 case file VI SA/Wa 557/06 held that reputation is not taken into account during proceedings for lapse of a right of protection. Arguments that Koral company has no standing were rejected by the Court because both parties were also involved in unfair competition proceeding before civil court. Once again, both companies filed a cassation complaint. The Supreme Administrative Court in its judgment of case file II GSK 138/07 ruled that the reputation of a trade mark is irrelevant when there is invalidation proceedings. This is not the stage. Reputation could be taken into account during the application proceeding for Koral company’s trade marks. A single fact of non-used Red Bull’s trade mark being an obstacle for registration was a sufficient condition for declaring its expiry.

Koral Company has also called into question the date of expiry of the right of protection. It was the reason for SAC to discuss the issue in extended chamber. The Court gave its opinion in judgment of 23 April 2008, act signature II GPS 1/08. See also “Trade mark law, case II GPS 1/08“.

Trade mark law, VI SA/Wa 1962/07

July 6th, 2008, Tomasz Rychlicki

The Polish company Zakład Gospodarki Komunalnej Organizacja Odzysku Biosystem S.A. requested the Polish Patent Office to take a decision on the lapse of the right of protection for IR-653449 and IR-585713 trade marks registered for goods in the following classes 1, 2, 3, 5, 6, 7, 8, 9, 11, 16, 20, 21, 24, 25, 29, 30, 32, 34, 35, 36, 39, 40, 42. Both trade marks are owned by Der Grüne Punkt Duales System Deutschland GmbH.

IR-653449

In support of its legal interest Biosystem S.A. explained that it is one of more than 30 domestic companies, specializing in recovery of certain categories of waste and like other market participants have the right to use the informational signs. While Rekpol S.A., being the sole licensee of Der Grüne Punkt Duales System Deutschland GmbH trade marks, is sending C&D letters to different businesses, including Biosystem S.A. According to Biosystem the questioned trade marks are spreaded and used among various companies and as the result of negligence of the owner and licensee these signs cannot fullfill the functions to designate the origin of a particular entrepreneur and have degenerated in respect of all goods and services and become a carrier of information in trade that the product bearing the mark shall be recovered.

The PPO decided that the Polish company has no legal interest (but only factual one) in all classes of goods since it produces none of the goods covered by the protection right (and it doesn’t not sell them), but only provides services related to recovery of certain categories of waste.

The PPO only agreed that Biosystem S.A. has shown legal interest in seeking the lapse of the disputed trade mark registration in part, on all services (i.e., services included in classes 35, 36, 39, 40, 42). In this respect, the PPO considered that the interest can be inferred from the principle of freedom of establishment guaranteed by article 20 of the Constitution and Article. 6 of the Act of 2 July 2004 on freedom of economic activity.

Biosystem appealed. The Voivodeship Administrative Court in its judgments of 15 April 2010 case file VI SA/Wa 1959 and VI SA/Wa 1960/07 held that the definition of waste and recycling, shows that waste are the goods. Thus, in the view of the court it was possible to trade in such goods. The court held that it may be that the scope of activities of Biosystem S.A. include those goods. Hence the need to examine the legal interest in the classes of goods. Legal interest shall be tested at the begining of hearings, therefore, the VAC did not address the merits of the dispute. The Court ruled that the repealed decisions of the Polish Patent Office shall not be enforceable.

The VAC decided on other PPO’s decisions on IR-585714 and IR-653450 trade marks and held the same in its judgments of 24 April 2008 case file VI SA/Wa 1961/07 and VI SA/Wa 1962/07.

Trade mark law, case II GPS 1/08

April 23rd, 2008, Tomasz Rychlicki

The Polish Supreme Administrative Court has been asked the following important question: should the date of lapse of the right of protection for a trade mark be the last day of a period of five successive years as mentioned in 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 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, or the day when the motion to declare the expiration of trade mark rights was filled, if the period of five successive years of non-use of a registered trade mark was longer then five years?

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, unless serious reasons of non-use thereof exist;

The Supreme Administrative Court in its judgment of 23 April 2008, case file II GPS 1/08 held that according to Article 169(1)(i) of 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.

Trade mark law, case II GSK 309/07

March 30th, 2008, Tomasz Rychlicki

The 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.

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 173/06

November 8th, 2006, Tomasz Rychlicki

On 10 December 2003, Eska Nord Sp. z o. o. requested the Polish Patent Office to decide on the lapse of the right of protection for “Radio 73,2 Fm ESKA” R-98909 trade mark due to the non-use. The applicant explained that since 1993 it operates as a commercial radio station that broadcasts its program in the Tri-City region (Gdańsk, Sopot and Gdynia) and the surrounding area, using the ESKA-NORD brand. The applicant has claimed its legal interest from the fact that the District Court in Gdańsk issued on 1 August 2003 an order prohibiting Radio ESKA S.A. the broadcasting at radio frequency 94.6 MHz in Gdynia and 90.7 Mhz in Gdansk, and prohibiting radio broadcasting and advertising under the names Eska and Eska Trójmiasto.

R-98909

Radio Eska S. A. sought to dismiss the request and provided the correspondence with the National Broadcasting Council on the use in 1999, of the questioned trade mark in the registered form. The company explained also that it ceased using in “73.2″ number in the questioned sign as it was justified because it changed the broadcasting frequency under the Regulation of the Minister of Communications dated 16 December 1999 on the frequency allocation and frequency ranges in the Republic of Poland and the conditions of their use Official Journal No 109, item 1252.

The PPO its decision of 21 February 2005 dismissed the request and pointed out that timeframe to be considered whether disputed trade mark was used and in what form includes the period of 5 years between dates 10 December 1998 and 10 December 2003.

The Voivodeship administrative Court in Warsaw in its judgmen of 7 February 2006 case file VI SA/Wa 1749/05 dismissed the complaint. The Court, pointed out to the fact that the use of the trade mark in broadcasted programs and in correspondence was the use in the course of trade and it met the requirement of genuine use as referred to in the IPL. The Court also noted that under Article 19(1) of the TRIPS the important reasons of the non-use is justified, are import restrictions or other government requirements for goods or services protected by a trademark.

The Supreme Administrative Court in its judgment of 10 October 2006 case file II GSK 173/06 held that the use of a trade mark in a form that differs from that for of a trade mark for which it was granted a right of protection, but in elements which do not alter its distinctive character, is also deemed as the genuine use. The SAc ruled also that there was the use of the trade mark in the form of RDS (Radio Data System) during the emission of radio programs and within a website available at www.eska.pl, presenting the logo of the station. In the first case while listening to the station with a radio equipped with RDS there were presented verbal communications, including communication with the station name (in this case: Radio Eska).