Polish IP & IT law » Art. 246 IPL

Archive for: Art. 246 IPL

Trade mark law, case II GSK 495/09

August 10th, 2010, Tomasz Rychlicki

On 14 March 1994, Polish entrepreneur operating under the name Usługi Pogrzebowe “Hades” Włodzimierz Wasilewski from Częstochowa applied for the right of protection for HADES Z-130892 trade mark in class 45, funeral services. Another Polish entrepreneur operating under the name Nowak Tomasz Firma Pogrzebowa HADES from Łódź filed an opposition to a final decision of the Patent Office on the grant of the right of protection for HADES R-148641 trade mark.

R-148641

Tomasz Nowak claimed that the Polish Patent Office ruled on the discontinuance of examination proceedings for HADES Z-130892 because of the failure to pay application fees and on 6 March 1999, he decided to file for the right of protection for word-figurative trade mark HADES Z-198798 in classes 26 31 39 42. On 26 September 2001 the PPO granted the right of protection for HADES R-132619 trade mark. Tomasz Nowak argued that the resumption of proceedings by the Patent Office on the application of HADES Z-130892 trade mark, which led to the granting of the right of protection, deprived him of part of the right acquired in good faith and the possibility to obtain the protection for the next sign. According to Tomasz Nowak the decision on the grant of the right of protection for HADES R-148641 trade mark, not only violates his right to earlier acquired trade mark, but most of all it violates the principle of certainty and security of legal transactions. It leads to a situation where the market will experience two identical trade marks, registered for identical goods, however, enjoyed by the various owners, which is contrary the rules of trade mark law of course.

R-132619

The PPO dismissed the opposition and Tomasz Nowak filed a complaint against this decision of the PPO. He based its claims on provisions of article 8(1) and (2) of 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 later amendments.

Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;

Tomasz Nowak also challenged the examination proceedings which led to the registration of the questioned trade mark.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 January 2009 case VI SA/Wa 1941/08 ruled that legal provisions invoked in the complaint cannot be applied to assess the legality of the registration proceedings conducted by the PPO. Accordingly, the request for invalidation of right of protection of HADES trade mark under these provisions was irrelevant. The provisions of the TMA, or the IPL does not provide in the course of the litigation proceedings lead by the PPO, the possibility to control the legality of the administrative proceedings that concerned the registration of the questioned trade mark. The Court ruled that the allegations of violation of the administrative procedure by the PPO could only qualify as a basis for annulment of the decision. Tomasz Nowak was required to bring such claims in the complaint, however he did not so. Tomasz Nowak filed a cassation complaint.

The Supreme Administrative Court in its judgment of 15 June 2010 case file II GSK 495/09 dismissed the cassation complaint. The SAC ruled that the VAC could not review the decision on the grant of a right of protection for HADES R-148641 trade mark. The VAC had to decide within the scope of the complaint and shall be bound by the legal ground invoked by the requesting party. The SAC also expressed the view that the registration of the name of someone else’s company does not preclude the registration of a trademark but the right to a name of the company must be infringed, and the existence of such right has not been proven by Tomasz Nowak. The complainer has not demonstrated that he had the right to name of the company. Actually both entrepreneurs have the right to use HADES sign as their business name. The complainer also argued that the mere prior use of the sign and not in relation to the applicant, but in relation to the entitled to the right of protection, provides a sufficient argument that the questioned trade mark infringes personal or economic rights of third parties. The SAC ruled that this view is incorrect. It clearly refers only to infringement of personal or property rights.

Industrial design law, case VI SA/Wa 599/10

August 2nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 12 May 2010 case file VI SA/Wa 599/10 held that the factual justification of the decision of the Polish Patent Office should contain the facts that the PPO regards as proven, the evidence relied upon and the reasons for which other evidence has been treated as not authentic and without probative force. The legal justification should contain the legal authority for the decision with reference to the relevant law. Only justification prepared in accordance with these requirements allows for a full review of the contested decision. The Court upheld the contested decision and ruled it unenforceable because the PPO found that the design meets the requirement of individual character, but it did not explain which differences in shapings decide on their individual character. The position of PPO as to a small range of creative freedom was also not apparent from the justification.

Wzór Przemysłowy Rp-12232

This judgment concerned the industrial design “Plafoniera sufitowa” (in English: Ceiling plafoniere/ceiling-mounted chandelier) Rp-12232.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

Trade mark law, case VI SA/Wa 808/10

July 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its order of 28 June 2010 case file VI SA/Wa 808/10 ruled that according to article 143 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, the Polish Patent Office shall publish a trademark application immediately after the expiration of three months from the date of filing of that application. As from the date of publication any third parties may acquaint themselves with the trademark determined in the application and with the list of the goods for which the mark is intended. They may also submit to the PPO their observations as to the existence of grounds that may cause a right of protection to be denied. Therefore, anyone has the right to submit comments to a trade mark application, but filing such comments does not make someone a party to the examination proceedings. These observations are only material that will be taken into consideration when examining the trade mark application

The VAC also noted that according to article 246 of the IPL any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a right of protection within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, and according to article 164 of the IPL, the right of protection for a trademark may be invalidated in whole or in part at the request of any person having a legitimate interest therein, provided that that person is able to prove that the statutory requirements for the grant of that right have not been satisfied. In such cases, the person is a party to the proceedings. This case concerned Gobired trade mark R-222675 owned by Przedsiębiorstwo Handlowo-Usługowe MAREL PLUS Leszek Marcinowski from Gdańsk.

Trade mark law, case II GSK 608/09

July 13th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 13 May 2010 case file II GSK 608/09 held that at both the opposition proceedings as referred to in article 246 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, that served as the basis for the decision to refuse to grant a right of protection, and subsequent proceedings before the Polish Patent Office under litigation for invalidation of a patent, a right of protection or a right in registration due to the recognition by the proprietor of a trade mark that the opposition is to be unfounded, the applicant who wants to support the opposition does not have to show the legal interest.

R-149940

Article 246
1. Within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right in registration.

2. The opposition referred to in paragraph (1) may be filed on the same grounds, on which a patent, a right of protection or a right in registration may be invalidated.

Trade mark law, case VI SA/Wa 2013/09

June 23rd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 8 April 2010, case file VI SA/Wa 2013/09, held that the reputation is not a simple consequence of circulation of a trade mark on the market.

R-179043

The renown trade mark is one that has its own reputation, and so in addition to its recognition it must be distinguished by additional characteristics, i.e. market share (in terms of both quantity and value of traded goods), the extent and continuity of advertising of the product marked with the sign, territorial and temporal scope of trade mark use, licenses granted for the use of the trade mark, the quality of the goods, the value of a trade mark in the assessment of independent financial institutions, the amount of expenditures incurred in connection with the promotion of trade mark, the relationship to the price of substitute goods, whether (and if so, to what extent) the mark was used by third parties.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

Poland: it’s not so easy to find lashes for trade mark profiteers

August 18th, 2009, Tomasz Rychlicki

On 23 September 2005, the Polish Patent Office granted the right of protection for the word trade mark COROTAPE R-168086 for goods such as tape, foil and anti-corrosion membranes in class 2 and goods in class 16. The right was granted to the Polish company CB Spółka z o.o. from Opole. Coroplast Fritz Müller GmbH & Co.K.G. from Wuppertal, Germany, filed a notice of opposition based on article 246 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.

1. Within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right in registration.

2. The opposition referred to in paragraph (1) may be filed on the same grounds, on which a patent, a right of protection or a right in registration may be invalidated.

Coroplast Fritz Müller argued that COROTAPE was similar to its COROPLAST mark R-91907, registered for goods in classes 2, 9, 16 and 17 and that they were confusingly similar because they shared the same prefix “coro”. There was therefore a risk that the average recipient of the goods bearing compared trade marks, may think that the conflicting signs, as having a common, “coro” prefix, derived from the same manufacturer or from companies affiliated (legally or organizationally). In addition, Coroplast Fritz Müller argued that the trade mark application was made in bad faith, because its products were present in Poland for many years and had established a reputation of which CB Spółka z o.o. must have been aware.

CB Spółka z o.o. argued that it continued the development of the COROTOP brand and that the disputed trade mark was not similar to the trade mark and company name of Coroplast Fritz Müller in their phonetic aspect because, in spite of the identical prefix, they had a completely different ending, indicating the nature of the product. In addition, the Polish Patent Office had registered a number trade mark starting with the prefix “coro” or “koro” for goods in classes 2 and 17. What’s more, there was no risk of misleading, because the goods were placed on the market in conjunction with the information for the customer and for a limited group of specialized recipients.

Coroplast Fritz Müller further stated that the Polish company acted in bad faith because it had used COROPLAST on its website which was removed as a result of the cease and desist letter, and since the seat of CB Spółka z o.o. was located where two Polish subsidiaries of German companies also operated.

While assessing the similarity of the two characters, the PPO found that they consisted of three syllables, with the same fanciful prefix, which is a distinctive element and acts as a tip about the commodity. As a result, the PPO found that the disputed trade mark was similar to the earlier registered sign in its visual and aural aspects but was not similar in the conceptual context. The PPO indicated that the visual similarity was based on the same syllables, the same letters in the same or similar quantities. The PPO also stressed that the disputed mark was of three syllables, using the same “coro” prefix, which was fanciful, and was definitely a distinctive element. The “tape” ending was far less important, fulfilling an information role about the function of the goods. The use of the “coro ” prefix maked the signs phonetically similar.

Referring to the case law, the PPO emphasized that assessment of a trade mark is made as a whole and the risk of misleading the consumer must be assessed globally, taking into the account all relevant factors. In the PPO’s assessment, despite the assumption that the average consumer is a person duly informed, careful and cautious, there is a risk of confusion. The buyers, while recognizing the difference between COROPLAST and COROTAPE, would wrongly assume – because of the prefix which is identical – that they purchased the goods originating from one manufacturer or from the entities that are economically and organisationally linked.

The PPO did not agree with an argument that it had registered a number of trade marks for goods in in class 2 and 17 with “coro” and “Koro” prefixes. It pointed out that none of these trade marks was intended to designate the goods that were concerned in this dispute, adhesive tapes for industrial use.

In addition the PPO found that the applicant made a bad faith application for COROTAPE. It was evidenced by the use of “coroplast” in the offer and on its website. The PPO found that it was not accidental that the use of the prefix “coro” in the COROTAPE and COROTOP trade marks, which are leading brands of CB Spółka z o.o. The PPO also stressed the significant fact that there were two factories belonging to Coroplast Fritz Müller GmbH, located in small towns around Opole (where CB Spółka z o.o. has its business seat), which have operated since 1994 and 1998. According to the PPO, it was not possible that CB Spółka z o.o. was not aware of the existence of these factories and unwittingly created a trade mark with a “coro” prefix.

The Polish Patent Office invalidated the right of protection for COROTAPE R-168086 trade mark. CB Spółka z o.o. filed a complaint to the Voivodeship Administrative Court in Warsaw. Although the VAC in a judgment of 19 February 2009, case file VI SA/Wa 1917/08 ruled that an application for the rights for protection of a trade mark in bad faith occurs when, despite the knowledge or ignorance, which is a corollary of a lack of diligence, regarding the existence of someone else’s rights or interest worth of protection, which may be threatened by such application, and with the intent to harm someone’s else interests. The intention, assessed from the point of view of fairness and honesty, is of great importance for the assessment of applicant’s bad faith.

Such is the case when the trade mark application is done in order to eliminate a competitor with the intent to capture his clientele. Acting in bad faith is one who knows or with due diligence should know about the use of a trade mark by another highly successful entrepreneur and – anticipating his application for the right of protection for a trade mark – he applies for the registration of such trade mark. Acting in bad faith is a person who applies for a trade mark rights for a sign belonging to a foreign entrepreneur to prevent him in obtaining protection in the Republic of Poland or in order to obtain profits from the sale of such acquired rights.

But the Court also held that the Polish Patent Office did not properly justify its decision on the bad faith application. The VAC found that the issueance of the contested decision was made in breach of the procedural law, and it annulled it, ruling that the decision was not a subject to execution. The judgment is final.