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Archive for: Art. 171 IPL

Trade mark law, case II GSK 708/08

June 26th, 2009, Tomasz Rychlicki

On June 2007, the Polish Patent Office issued a decision in which it has invalidated the right of protection for the word-figurative trade mark Lech-Pol R-132854 that was registered with the priority date of 1998 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 LAŃCUT S.A. from Lańcut. The company from Lańcut 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 a request to invalidate the right of protection for the trade mark lech wódka R-145285.

According to Polmos Lancut’s arguments, Mariusz Lech used the disputed trade mark only for products such as strong fruit wines. He was not imposing this sign 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 against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 5 February 2008 case file VI SA/Wa 2019/07 dismissed it. Mariusz Lech filed a cassation compalint. The Supreme Administrative Court in its judgment of 16 April 2009 case file II GSK 708/08 dismissed it.

See also “Trade mark law, case VI SA/Wa 1042/08” with regard to issues of non-use and genuine use.

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 in its judgment of 6 February 2008 case file VI SA/Wa 1418/07 agreed with PPO’s decision and dismissed Bauer’s complaint. 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 dismissed 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.