The Polish Patent Office partially refused to grant the right of protection for the word-figurative trade mark moja historia Z-338905. This sign was applied for PHOENIX PRESS Sp. z o.o. Sp.k. from Wrocław for goods and services in Class 09, 16, 35, 39, 41 and 42. The PPO based its refusal in Class 09, 16 and 41 on the earlier registration of the word-figurative trade mark Moja historia R-187793 owned by WYDAWNICTWO ERA Sp. z o.o. from Straszyn. PHOENIX only agreed that both companies are publishers, but the signs are meant for other goods and are directed to another recipients. Phoenix is a press publisher whose clients are adult women and WYDAWNICTWO ERA is a publisher of school history textbooks (mainly the history of Poland), which customers are students in primary schools.
The PPO decided that there exists similarity of signs and goods and services which may lead to consumers confiusion. PHOENIX filed a complaint against this decision. The Company argued inter alia that the PPO could grant the right of protection and it would not deprive WYDAWNICTWO ERA of protection provided for instance in the Polish Act on Combating of unfair competition, if PHOENIX’s trade mark would actually threaten the existence and functions of the trade mark owned by ERA.
The Voivodeship Administrative Court in Warsaw in its judgment of 8 June 2011 case file VI SA/Wa 611/11 dismissed the complaint. The Court ruled that regulations on combating unfair competition are provided in a separate act, and it is justified by both the construction of the Polish legal system and due to the method of regulation. The law on combating unfair competition does not create absolute rights, but only the system of legal claims that provides protection in the event of unwanted and objectionable market behavior and actions (unfair competition delicts or torts), which is a different approach than those adopted in the Polish Industrial Property Law, which are based on the granting of absolute rights (monopolies) by an administrative decision.