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Archive for: Art. 255 IPL

Trade mark law, case II GSK 269/10

August 5th, 2011, Tomasz Rychlicki

Polish company Przedsiębiorstwo Produkcji Lodów “KORAL” Józef Koral Spółka jawna from Limanowa, the owner of the word trade mark RED BLUE Z-277694 requested the Polish Patent Office to decide on the invalidation of the right of protection for the word trade mark RED BULL IR-708694 in part for goods in Class 30. KORAL claimed inter alia that the registration of the questioned trade mark was made in violation of Article 6(1) 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 subsequent amendments, becasue goods in Class 30 are not subject to the activities of the Red Bull GmbH.

6.
(1) A trademark shall be registrable on behalf of a specific enterprise, but only in respect of goods falling within its field of economic activity.

On 15 December 2008, Red Bull informed the PPO that with effect from 5 December 2008, the Company renounced the protection of the questioned trade mark for goods in class 30 on the Polish territory. The PPO dismissed the request and noted that Red Bull GmbH is a limited liability company under the Austrian law. According to the registry of commercial activity, the company uses the Red Bull brand in the course of trade. In the opinion of the PPO, the Austrian law does not require further specification of the scope of the commercial activity of a company. The PPO has indicated that the minimum condition for which the entrepreneur must meet while applying for a trade mark in order to be grated the exclusive rights to that sign, is the intent of use. Such intent may be interpreted from the list of goods and services covered in the application and registration of the trade mark. KORAL filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 26 October 2009 case file VI SA/Wa 1263/09 dismissed the complaint and KORAL filed a cassation complaint.

The Supreme Administrative Court in its judgment of 13 April 2011 case file II GSK 269/10 dismissed the cassation. The SAC ruled that the Polish legislature adopted the law which implies that a trade mark may be registered if it’s related to the business activity of an entrepreneur and, therefore, that this is not property in itself, which can belong to anyone, but it is an intangible component of the company/enterprise, that serves to distinguis the goods or services from other goods and services of the same kind of other companies. The second of those conditions preclude the possibility of marking other goods than the goods covered by the activities of a company. There is no doubt that the product (or service) that is actually offered in the market by the company, is a commodity, which is the subject of its business.However, a trade mark can (and should) also be used for goods that are not currently offered. Therefore, some of problem of interpretation arises in the case of these goods (and services) that can be marketed by the company in the future. The SAC noted that the case law and legal doctrine adopted the view, that commodities which are the subject of a business activity will also be goods or services, what a company intends to introduce to the market in the future. Thus, the need arose to determine the criteria that would allow for the identification of the types of goods that are covered at the time of filing of a trade mark application (and consequently by the registration) by the intention of marking them in the future by that trade mark. Such intention is disclosed by identifying of the company activities in the appropriate register, because it is a public declaration of the entrepreneur on which fields of economic activities it intends to participate, or what kind of goods or services it will be offering on the market.

Trade mark law, case VI SA/Wa 2180/10

April 19th, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 11 March 2011 case file VI SA/Wa 2180/10 ruled that the word-figurative trade mark 60 R-156991 is not sufficiently distinctive in standard business transactions because it does not individualize the goods of the trade mark owner among the goods of the same type that originate from different companies.

R-156991

The Polish Patent Office properly assessed the consumers of goods such as crosswords publications, and considered this groups as very diverse. Its members are people of different ages and different levels of education. There was no reason to believe that such a broadly defined consumer will identify a specific numerical designation with a given publisher, not the number of crosswords included in the publication. This judgment is not final yet.

Industrial design law, case VI SA/Wa 736/10

January 19th, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 4 October 2010 case file VI SA/Wa 736/10 ruled that the protection of unregistered Community design that results from the Community regulations does not allow for its extension through the registration of that design. Moreover, the protection of an unregistered Community design starts from the date of its first public disclosure.

Rp-12166

This judgment concerned the industrial design “Urządzenie treningowo-sportowe” (in English: Sports-based training device), Rp-12166. The judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case VI SA/Wa 1345/10

January 7th, 2011, Tomasz Rychlicki

Polska Agencja Fotograficzna Studio 69 filed a notice of opposition to a final decision of the Patent Office on the grant of a right of protection for STUDIO 69 R-182300 trade mark owned by Marcin Maculewicz from Kielce. PAF claimed that the phrase STUDIO 69 was widely known and used by PAF as its trade mark. PAF also argued that according to 15 years of its business practice one can successfully operate on the media market without reserving or registering a brand name, and STUDIO 69 is a common sign that is also used widely by many companies. At the same time PAF did not claim infringement of the company name and explained that different entrepreneurs use such a sign.

The Polish Patent Office ruled that it is the duty of the opposing party to prove that a given sign is well known and is associated with products coming from the opponent. This should be demonstrated at the filing date of an application for the registration of a trade mark. The PPO explained that the well known sign is characterized by two elements. The first one is related to the function of marking the origin of goods/services (the distinctive function). A sign must have this feature in order to be registered as a trade mark. The second element is the requirement that a trade mark has became commonly known as a result of the use. According to the Polish case law and legal doctrine, a well known sign should be recognized in most of the territory, by more than half of potential purchasers of the goods. The basic criteria for assessing the objective possibility to become a well known trade mark include: the period of time of trade mark use, the situation of goods on the market (quantity, availability, method and scope of distribution), advertising campaigns and the strength/distinctive character of a trade mark. The PPO examined the evidence presented and reminded that common knowledge is assessed in terms of knowledge among potential customers. The PPO ruled that PAF has not demonstrated that more than 50% of potential customers on the Polish territory is familiar with STUDIO 69 trade mark and decided to dismiss the opposition. PAF filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 14 October 2010 case file VI SA/Wa 1345/10 dismissed the case. The Court ruled that the Administrative Court, as a rule, does not carry out hearing of evidence, because the examination of legality of an administrative decision is based on the evidence gathered in the proceeding before an administrative authority (in this case the PPO) issuing the contested decision. According to Polish legal commentators, in principle, there are three sources of trademark protection within the industrial property law: the grant of a right of protection for a trademark (in the form of an administrative decision issued by the PPO), the use of a trade mark and common knowledge of a sign. The Court cited W. Włodarczyk, The distinctive ability of a trade mark, Lublin 2001, p. 28. The VAC held that PAF did not prove that STUDIO 69 was a well known sign. The judgment is not final yet.

Trade mark law, case VI SA/Wa 601/10

December 21st, 2010, Tomasz Rychlicki

The Polish company Producent Okien i Drzwi z PVC “OKLAND” Joanna Wilk i Wojciech Wilk Spółka Jawna from Kostomłoty Pierwsze filed a request for invalidation of the right of protection for a word-figurative trade mark Okland R-154904 owned by OKLAND Spółka z o.o. from Rokitki, in regard to the goods in Class 19, wooden windows. The company from Kostomłoty Pierwsze claimed it operates since 1 June 1997. Its business activities include the production of windows and doors of PVC in the four southern voivodeships. The company argued that the simultaneous use of the OKLAND sign in its company name and as a trade mark registered for a different entrepreneur may increase the risk of misleading the public, which includes in particular the risk of association between signs. The Polish Patent Office invalidated the right of protection. Okland from Rokitki filed a complaint against this decision.

R-154904

The Voivodeship Administrative Court in Warsaw in its judgment of 31 May 2010 case file VI SA/Wa 601/10 held that the registration of a trade mark that is identical or similar to a company name of another entrepreneur does not determine, however the infringement of the rights to the company name (the firm). The exclusive rights to the company name are not absolute. The limits of these rights are set by the coverage (territorial and objective) of the actual activity of a given company. The collision between identical or similar signs i.e. a company name and a trademark, may occur only within these limits. The judgment is not yet final.

Trade mark law, case VI SA/Wa 807/10

November 8th, 2010, Tomasz Rychlicki

On 27 January 2007, the Polish Patent Office granted the right of protection for GUCIO trade mark R-187648 for goods in Class 25 such as children’s shoes.

Guccio Gucci S.p.A. the owner of inter alia word-figurative trade marks GUCCI R-181633 and GUCCI R-184796 gave a notice of opposition to a final decision of the PPO on the grant of a right of protection to GUCIO trade mark. While proving the reputation of GUCCI trade mark, the Italian company stressed the fact that it owns many stores, where high-quality clothing and footwear is sold and it also includes shoes for children. The customers of these stores are known and influential people. The company argued that since the mid-twentieth century, the Gucci brand and products bearing this trade mark are associated with the highest quality and luxury – Gucci has become sort of “certificate of quality.” The Company pointed out that Gucci fashion house brings together leading, world fashion designers thus have a substantial impact on global fashion trends. Consequently, the goods that are marked with this symbol appear in numerous television programs, shows and magazines on fashion. GUCCI argued that similar trade marks in conjunction with the homogenity of goods for which these signs are clearly intended, may to lead to the risk of their association, and even confusion by customers, and this causes the possibility of customer confusion as to the origin of goods.

R-181633

Sławomir Piwowarczyk, the holder of GUCIO trade mark argued that the word GUCIO is a diminution of GUSTAW. The PPO dismissed the opposition. GUCCI filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 30 August 2010 case file VI SA/Wa 807/10 dismissed the complaint and held that dissimilar signs cannot lead to customers’ associations, so there can be no issue of imitation, and conscious deriving of benefits from someone else’s reputation. If the similarity between the signs does not occur there is no need to examine whether there was the use of another person’s reputation. The examination whether there are similarities between the trade marks is the “precondition” of establishing the argument/view that the use of reputation has been made. The second condition is to establish/examine that the trade mark has a reputation. The judgment is not final yet.

Trade mark law, case VI SA/Wa 347/10

October 29th, 2010, Tomasz Rychlicki

On 9 July 2005, the Polish Patent Office registered word-figurative trade mark “PERŁY I ŁOTRY SHANGHAJU” R-164275 for Grzegorz Majewski “SINONIS” from Katowice. Michał Gramatyka, Wojciech Harmansa, Adam Saczka and Sławomir Olko filed a request for the invalidation of the right of protection. They claimed that they were members of the music band “PERŁY I ŁOTRY SHANGHAJU”, the band’s name is a common right and therefore the registration of this name as a trademark by Grzegorz Majewski violated the rights of other band members. The applicants alleged that Majewski filed for the registration at a time when he was not an active member of the band and he also knew that “PERŁY I ŁOTRY SHANGHAJU” continues its operation, accordingly he acted in bad faith. Bad faith is also confirmed by the fact that based on the granted right of protection for the trade mark in question, Majewski demanded the cessation of business activity of the other band members. The sign in question is a word-figurative trade mark and similarities that exist may mislead the public with “PERŁY I ŁOTRY” R-194932 trade mark registered for Firma Usługowo-Handlowa HARPEL II Wojciech Harmansa. See also “Trade mark law, case Sp. 211/08“.

R-164275

The Polish Patent Office dismissed the request and concluded that there was no reason to believe that the grant of protection to the trade mark at issue violated the personal rights of applicants if a civil court’s judgment submitted during the invalidation proceedings included a statement that they are not entitled to such a personal right/interest to the band name. The applicants filed a complaint against this decision.

R-194932

The Voivodeship Administrative Court in Warsaw in its judgment of 24 August 2010 case file VI SA/Wa 347/10 annulled the contested decision and ruled it unenforceable. The VAC held that there was a breach of procedural law. The Court held that the PPO, in fact, did not properly examine the request for invalidation. The PPO based its findings only on certain statements issued in the judgment of the Apellate Court in Katowice, and draw more far-reaching conclusions. And so, from the finding of the Appellate Court that plaintiffs have not demonstrated the fact that they are entitled to the name of the band “Perły i Łotry Szanghaju”, the PPO reached a conclusion that the applicants shall have no personal or property rights, and then ruled the argument of acting in bad faith as unfounded. This jugdgment is not final.

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 subsequent 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 598/10

August 2nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 12 May 2010 case file VI SA/Wa 598/10 held that the court’s review of a decision issued by the PPO does not include a requirement to make additional findings for a case. The factual justification of the decision 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.

Wzór Przemysłowy Rp-12224

This judgment concerned the industrial design “Ramię ozdobne do opraw oświetleniowych” (in English: Decorative Arm for luminaires) Rp-12224.

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

Trade mark law, case VI SA/Wa 2038/09

July 14th, 2010, Tomasz Rychlicki

Polish company Przedsiębiorstwo POLMOS Białystok Spółka Akcyjna, the owner of word-figurative and 3D trade mark “POLMOS ŻUBRÓWKA BISON BRAND VODKA” R-62081 and 3D trade mark R-85811, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection to word-figurative and 3D trade mark “VODKA Herbe de Pologne” R-155144, registered for BELVEDERE S.A.

R-62081

POLMOS argued, inter alia, that there is a significant visual similarity between trade marks at issue. Its bottle has a blade of grass, which is very dominant and attracts the attention of the average consumer. Such assessment cannot be undermined by the fact that there are few blades of grass in the bottle representing the questioned trade mark. POLMOS argued that the registration of “VODKA Herbe de Pologne” threatens the reputation of its trade marks, and emphasized the role of grass in the bottle as a motif indicating the origin of the product. POLMOS added that the purpose of BELVEDERE’s actions was the parasitic use of the reputation of earlier trade marks owned by POLMOS.

In the opinion of the Polish Patent Office (PPO) these trade marks were visually dissimilar because of different bottle shape, color, the presence of a label in the contested mark and the lack of labels in the opposed one, number and appearance of components in liquid. These signs were incomparable in the phonetic/aural aspect, so they were also dissimilar, as the opposed trade mark lacks lettering. In the conceptual aspect the questioned trade mark contains a bunch of herbs inside the bottle and the word “herbe” which indicates that the vodka is herbal, and the opposed sign, contains a longitudinal component, but this element in general is not like weed-grass. Consequently, due to lack of similarity the PPO held that the opposition is unfounded. POLMOS filed a complaint.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 April 2010 case file VI SA/Wa 2038/09 held that in the case of trade mark reputation, a sign has to be examined as a whole, as the right of protection was granted for such a designation. It can not be allowed to examine every element of the sign separately, in isolation from the whole trade mark.

R-155144

The Court also ruled that the similarity of signs is a prerequisite for examining whether in a particular situation there was infringement of the reputation of an earlier mark. See “Trade mark law, case II GSK 207/07“. The VAC held that the absence of the similarity of signs, which also includes the possibility of their association, is the argument that the presence on the market of goods bearing the sign at issue will not affect in any way the alleged reputation and distinctive character of POLMOS’ trade marks.

Trade mark law, case II GSK 608/09

July 13th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 19 March 2009 case file VI SA/Wa 1888/08 ruled that the consequence of the transfer of trademark rights to another party is that its previous owner is not allowed to continue to invoke the claims of the infringement of these trade marks. However, such a possibility is not excluded if the assignment of the trade mark rights will include appropriate provisions authorizing the previous owner of the trade mark to continue proceedings in which it claimed it has rights to assigned trade marks.

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 subsequent 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 right of protection, 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.

This case concerned the invalidation proceedings of CARLO BOSSI R-149940 trade mark owned by KIVI Dr Krzysztof Słoń from Izabelin Laski.

Industrial design, case II GSK 323/09

February 23rd, 2010, Tomasz Rychlicki

A company filed a notice of opposition to a final decision of the Polish Patent Office (PPO) on the grant of a right in registration for the industrial design “Zadaszenie drzwi” (in English: door canopy) Rp-9198. The opposition has been filed under the provisions of article 102(1), article 103(1), article 104(1) and (2) and article 106(1) 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.

Article 102
1. Any new and having individual character appearance of the whole or a part of a product resulting from the features of, in particular, the lines, colours, shape, texture or materials of the product and its ornamentation, shall constitute an industrial design.

Article 103
1. An industrial design shall be considered new if, before the date according to which priority to obtain a right in registration is determined and subject to paragraph (2), no identical design has been made available to the public, i.e. used, exhibited or otherwise disclosed. Designs shall also be deemed to be identical with those made available to the public if their features differ only in immaterial details.

Article 104
1. An industrial design shall be considered to have individual character, if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available before the date according to which priority is determined.
2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Article 106
1. Rights in registration shall not be granted for industrial designs whose exploitation would be contrary to public order or morality; exploitation of an industrial design shall not be considered to be contrary to public order merely because it is prohibited by law.

The opposing party claimed the lack of novelty becuse the disputed design was disclosed inter alia during the exchange of correspondence with the owner and the lack of the individual character of a product. The PPO rejected the opposition and ruled that the industrial design is new. While referring to the cooperation between the opposing company and the owner, the PPO noted that the disclosure of a design was only approved between both parties. The PPO stated that the industrial design in question was not disclosed publicly. In the proceedings before the PPO and the courts no other evidence with regard to public disclosure of the design was submitted.

The Voivodeship Administrative Court in its judgment of 19 November 2008, case file VI SA/Wa 1767/08 dismissed the complaint against the decision of the PPO. The Supreme Administrative Court in a judgment of 20 January 2010, case file II GSK 323/09 dismissed the cassation complaint. The SAC held that any correspondence, not only commercial, bears the characteristics of confidentiality due to the fact that by its nature it is addressed to the designated entity, and refers the specific content associated with a certain confidence on the part of the sender. Its publication requires the consent of both parties. Therefore, it coould not be argued that the disclosure of a new design could take place in the correspondence between the two businesses working together. The cassation complaint also presented the argument of exceeding the principle of formality. The Court ruled it unfounded based on provisions of Articles 255 and 256 of the IPL.

Article 255¹
1. Litigation proceedings in the cases referred to in Article 255(1)(i)-(viii) shall be initiated at a written request.
2. A request for initiation of a proceeding shall be subject to payment of a fee.
3. A request shall contain:
(i) identification of the parties and their addresses
(ii) brief presentation of the case
(iii) clear definition of the decision sought
(iv) reference to the legal ground
(v) indication of evidence
(vi) signature of the requesting party and a date
4. The request shall be accompanied by:
(i) a power of attorney, where the request is submitted by the representative
(ii) copies of the request in a number corresponding to the number of the parties to the litigation proceeding
(iii) a receipt for the payment of the fee referred to in paragraph (2).
5. The Patent Office shall check whether the request for initiation of a litigation proceeding satisfies the formal requirements referred to in paragraphs (3) and (4).
6. Where the request fails to satisfy the formal requirements, the Patent Office shall invite the requesting party to remove the defects, under pain of discontinuance of the proceeding, within 30 days.

Article 256
1. The provisions of the Code of Administrative Procedure shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by this Law.
2. To costs of proceedings the provisions applied in civil law proceedings shall apply accordingly.
3. The provisions of the Code of Administrative Procedure governing re-examination, at a party’s request, of cases, in which decisions not liable to appeal were taken, shall not apply to decisions on merits taken after hearing.
3¹. The cases referred to in Article 2553(2) may be requested to be re-adjudicated. A time limit for submitting a request shall be, in case of a decision made – two months and in case of an order issued – one month from the date of the decision or the order being served upon the party.

Because of the adversarial nature of proceedings before the PPO, the party has to prove the circumstances from which it derives the legal consequences that are more favorable. The proceedings before the Polish Patent Office are reduced of principles set out in the of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments, including the principle of formality, or the principle to watch over the interests of the parties by the public administration bodies.

Wzór Przemysłowy Rp-9198

This judgment concerned the industrial design “Zadaszenie drzwi” (in English: door canopy), Rp-9198. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case II GSK 1034/08

January 20th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 17 June 2009, case file II GSK 1034/08 It is obvious that the Polish Patent Office should first examine whether there is a right for which the applicant files request for invalidation, then the PPO examines the legal interest of the applicant, and only then it should consider whether the legal grounds for invalidity are well founded. If at the time of examination of the request for invalidation, that right at issue no longer exists, due to the fact that its earlier decision on the grant of such right has been annulled, any further action is unnecessary and inadmissible as irrelevant. The PPO should terminate the proceedings without examination of the legal interest of the applicant and without considering the merits of the grounds of law. The dispute between the parties does not start due to the lack of action and any arguments of any party are no longer considered by the PPO. In this situation, there is no “winner” or “loser” because the merits of the request are not subject to examinations.

Rp-9476

This judgment concerned the industrial design “Opakowanie zwłaszcza na lody” (in English: Package especially for ice creams), Rp-9476. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case VI SA/Wa 1302/09

November 15th, 2009, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for “METAL-CHEM” R-138491 trade mark in part for goods in Class 7. The owner Przedsiębiorstwo Wdrażania Postępu Technicznego METAL-CHEM Spółka z o.o. from Gliwice filed a complaint against this decision, claiming inter alia that the PPO refrained from taking evidence from expert witness with regard to homegenity of the goods.

R-138491

The Voivodeship Administrative Court in Warsaw in its judgment of 13 October 2010 case file VI SA/Wa 1302/09 upheld the contested decision and ruled that the Adjudicative Board of the PPO, consisting of experts and the deciding cases in litigation proceedings may under the Article 84 § 1 of the APC appoint an experts witness to establish the facts on which the Patent Office has doubts, while the knowledge of the Board members is not sufficient.

Article 84
§ 1. If a case requires specialist information, a public administration body may consult an expert or experts for an opinion.
§ 2. An expert shall be excluded from proceedings on the basis of the rules set out in Article 24. The provisions regarding the hearing of witnesses shall also apply to experts.

It follows that the use of an experts witness should be incidental in nature as it was already discussed in by the Voivodeship Administrative Court in its judgment of 20 October 2006, case file VI SA/Wa 1075/06. Thus the PPO has the right but not the obligation, to refer to any opinion and it is also indicated by the optional nature of Article 84 § 1 of the APC. The PPO as a specialized authority that grants rights of protection for trade marks and other industrial property rights under the rule of law, is the only body that verifies under litigation proceedings, whether or not the exclusive right of protection for trademark meets statutory requirements. In this case, the task of the Board was the correct assessment of the similarity of the goods contained in the opposing trade marks, in which both parties used the terms in which the general range of meaning was available and is not misleading.

Procedural law, case II GSK 350/06

November 24th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 18 April 2008 case file II GSK 350/06 held that the duties of the Polish Patent Office to take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public cannot be “transferred” to the litigation proceedings in patent cases based on provisions of Article 256(1) 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.

Article 256
1. The provisions of the Code of Administrative Procedure shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by this Law..

2. To costs of proceedings the provisions applied in civil law proceedings shall apply accordingly.

3. The provisions of the Code of Administrative Procedure governing re-examination, at a party’s request, of cases, in which decisions not liable to appeal were taken, shall not apply to decisions on merits taken after hearing.

3¹. The cases referred to in Article 2553(2) may be requested to be re-adjudicated. A time limit for submitting a request shall be, in case of a decision made – two months and in case of an order issued – one month from the date of the decision or the order being served upon the party.

4. (repealed)

This is because the Article 255(4) of the IPL includes provisions that fully cover this regulation and precludes the possibility of complementary use of the provisions of Article 7 and 77 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments.

Article 255
4. The Patent Office shall settle cases in litigation procedure within the scope of the request and shall be bound by the legal ground invoked by the requesting party.

The Court also ruled the such findings do not preclude, of course, the activity of the Polish Patent Office to collect evidence, provided that they fall within an already pending case in litigation proceedings.