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Archive for: Art. 229(1) IPL

Trade mark law, case II GSK 487/12

June 27th, 2013, Tomasz Rychlicki

On May 2006, the Polish Patent Office granted the joint right of protection for the word-figurative trade mark SILMENT R-175055 for three Polish entrepreneurs – Stanisław Wilk, Jan Kosmala and Marek Siemiński. Mr Wilk requested the PPO for a change in the trade mark register. According to the donation agreement of January 2010, he has transferred to his son 1.65% of 33% of his share in the right to the trade mark. On June 2010, the PPO entered the name of his son and deleted Stanisław Wilk, however, after the request for re-examination, the PPO made another changes in the column A of the trade mark register, and entered both father and son as co-owners. Mr Kosmala filed a comaplaint against this decision. He argued that the supplied evidence did not allow for making such amendments. Mr Kosmala did not agree that a part of 33% share could be transferred to another person, because according the agreement of 2004 on the joint ownership, that was signed between Kosmala, Siemiński and Wilk senior, any joint owner could make a donation of the joint right to the right of protection for a trade mark SILMENT R-175055 only to the spouse and descendants of the first group of inheritance.

R-175055

The Voivideship Administrative Court in Warsaw in its judgment of 25 October 2011 case file VI SA/Wa 1409/11 noted that between co-owners to the trade mark SILMENT arose a dispute over the interpretation of the agreement. The Court ruled that, in principle, the right of protection for a trademark may be assigned or be subject to succession. The transfer of the right of protection may be effected only with the consent of the parties who enjoy that right. The agreement of assignment of a share in the joint right of protection should be only valid subject to the consent given by all of the joint owners. When examining the request for the change in the trade mark register, the PPO should investigate whether the submitted documents, supposed to provide grounds for taking a decision on entry in a register, are in accordance with this Polish Industrial Property Law and satisfy the effective provisions as to form. The entries should not be binding on an authority whose responsibilities, under the provisions of law, include deciding on a document founding the decision on entry in a register or in a case, the outcome of which may affect a decision of the Polish Patent Office on entry in the register. The “registry-entry” proceedings are designed to adjust the content of an entry with the current legal status, and a decision on the entry into the trade mark register has only a declaratory nature and it not a source of trade mark rights. Therefore, the cognition of the Polish Patent Office in matters of entries in the registry, is strictly defined. This means that while investigating the request for a change, the PPO cannot exceed those limits. As a result, the PPO cannot investigate the regularity of both the preparation of the documents submitted as a basis for entry in the registry, as well as make their interpretation. As there is dispute between the parties over the interpretation of the agreement, the PPO cannot agree to the interpretation of one of the parties. These doubts have to be resolved by a civil court. And if such dispute has not been initiated by a party, the PPO should stay proceedings and call the party to apply to the competent court, within the prescribed time, to provide a preliminary decision on the issue which is a condition of the settlement in the main case. Therefore,the Court annulled the contested decision, ruled it unenforceable, and ordered the PPO to consider the Court’s arguments during re-examination of the case.

The Supreme Administrative Court in its judgment of 20 June 2013 case file II GSK 487/12 dismissed the cassation complaint. The SAC held that the controversy concerning the effects of the donation agreement in the light of the content of the co-ownership of a trade mark rights, has to be resolved by a proper civil court.

Trade mark law, case II GSK 961/08

August 15th, 2009, Tomasz Rychlicki

By its decision of 20 January 1994, the Polish Patent Office registered the word trade mark JAZZ JAMBOREE R-75805 for services such as concert activities in class 41, with the priority date of 21 August 1991, for PSJ (the applicant).

In a letter dated 9 January 1995 and in a letter on February 2, 1995 Mr./Ms. BM (a debt collector/bailiff whose name is anonymized in the courts’ judgments) asked the PPO to distrain PSJ’s right to the JAZZ JAMBOREE R-75805 trade mark (in an order of February 1996 the Voivodeship Court dismissed the complaint brought by PSJ against the decision on the distraint and dismissed the complaint brought by Fundacja Jazz Jamboree from Warszawa).

By an order of January 1996, the Polish Patent Office made some changes in the Trade Mark register. The PPO deleted PSJ from the entry for the holder of the right of protection for JAZZ JAMBOREE R-75805 trade mark and in its place was entered the Fundacja Jazz Jamboree which, was later deleted and in its place was entered the Konsorcjum J.I. s.c.

By an order of December 1997 the Polish Patent Office deleted the Konsorcjum J.I. s.c and entered J.J. Sp. z o.o. as the holder.

By an order of June 2000, the PPO again changed the registry entry for the holder, deleting the J.J. Sp. z o.o., and entering PSJ; it then deleted the PSJ and entered Fundacja Jazz Jamboree.

By an order of June 2003, the District Court ordered the sale of the right of protection for JAZZ JAMBOREE R-75805 trade mark.

By an order of February 2006, the bailiff of a District Court enforced a court judgment (the execution was ordered against sums due and property rights) in the name of “A.P.” S.A. against PSJ and granted the right of protection for JAZZ JAMBOREE R-75805 to “AP” S.A. (it was unsold at the first and the second auction).

In its application of the May 2006, “A.P.” S.A. asked the Polish Patent Office to disclose the acquisition of trade mark rights to JAZZ JAMBOREE R-75805 in the Trade Mark registry. The application had attached the District Court’s order of June 2003, ordering the sale of the right of protection, and the bailiff’s order of February 2006 to grant to the unsold property rights to “A.P.” S.A.

By its decision of July 2006, the PPO, made changes in the Trade Marks register (in the “A” field – a holder), deleted Fundacja Jazz Jamboree as the holder and entered “A.P.” S.A. in this field, basing itself on the provisions of Article 229(1) 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.

Article 229
1. In matters in which entries in a register are conditional upon submission of a request, the entry shall be made by virtue of a decision.
(…)
2. When examining the request referred to in paragraph (1), the Patent Office shall investigate whether the submitted documents, supposed to provide grounds for taking a decision on entry in a register, are in accordance with this Law and satisfy the effective provisions as to form.

Fundacja Jazz Jamboree filed before the PPO a request for re-examination of the matter, arguing that the decision of July 2006 is wrong, because it did not take into account the fact of prior transfers of the right of protection for JAZZ JAMBOREE R-75805 from PSJ to Fundacja Jazz Jamboree, and its subsequent transfers. Fundacja Jazz Jamboree claimed that the decision of the District Court and the enforcement titles were issued against PSJ and not against Fundacja Jazz Jamboree, and that it was unlawful to decide on the transfer of JAZZ JAMBOREE R-75805 trade mark to “A.P.” S.A., since the registration gave title to Fundacja Jazz Jamboree.

In a decision of September 2007 the Polish Patent Office upheld the contested decision. The PPO indicated that the decision of July 2006 was issued pursuant to the bailiff’s order of February 2006. In accordance with the provisions of the Polish Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, published in Journal of Laws (Dziennik Ustaw) No 43, item 296, with subsequent amendments, the acquisition of rights regulated under the chapter on rules for the execution has the nature of original acquisition of rights. Accordingly the new owner acquires the right, without any encumbrances and burdens. The Polish Patent Office does not investigate who was the owner of a trade mark right and in what period of time. Since the entry in the Trade Mark register has a declaratory nature, and thus corresponds to the right that was granted to “A.P.” S.A. The PPO deals with the entering these facts on the register and is not a body of enforcement, much less the authority competent to decide on the merits or the effectiveness of the seizure by the bailiff or on the grant of rights to another company. The PPO also noted that Fundacja Jazz Jamboree had a chance to file anti-executory proceedings complaint, as provided in the Article 841 of the CPC.

Fundacja Jazz Jamboree filed a complaint to the Voivodeship Administrative Court in Warsaw but it was rejected by the VAC in a judgment of 10 March 2008, case file VI SA/Wa 2027/07.

The cassation complaint brought by Fundacja Jazz Jamboree before the Supreme Administrative Court was also dismissed in its judgment of 21 May 2009 case file II GSK 961/08. The SAC ruled that the Polish Patent Office within the confines of the registration proceedings regulated in article 229(2) of the IPL does not investigate the substantive basis for drawing up documents that are the basis for the entry into the registry. The Patent Office does not conduct any hearing of evidence with regard to circumstances underlying the issuance of documents that serve as a basis for an entry to a register and it has no control over the regularity of the proceedings leading to the issuance of documents that are a basis for an entry to a register.