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Archive for: Art. 315 IPL

Trade mark law, case II GSK 553/10

August 19th, 2011, Tomasz Rychlicki

Przedsiębiorstwo Przemysłu Spirytusowego POLMOS w Warszawie applied for the right of protection for the word trade mark „spirytus rektyfikowany” (in English: rectified spirit) Z-204843. The Polish Patent Office refused to grant the right of protection. The PPOo ruled that this designation is purely descriptive. It informs about the type of product and how it is produced, and while examined as a whole, this sign does not have any sufficient distinctive character in relation to goods for which it was filed. Therefore, it will not allow for the identification of the goods available on the market in terms of their origin. The PPO decided also that this sign is devoid of any characteristic features that may engrave into memory of the recipient and lead to the association with the entrepreneur, from which they originate. The recipient buying the goods bearing the sign in question will be informed about the characteristics of the product, not its origin. POLMOS claimed that „spirytus rektyfikowany” has acquired secondary meaning.

The PPO did not agree with the argument that a number of word-figurative trade marks containing the term “rectified spirit” that were registered for POLMOS supports the position that this trade mark has acquired secondary meaning, because all these trade marks were registered by the PPO because of its graphics and not the distinctive character of the disputed sign. The PPO concluded that the information on the secondary meaning posted on Wikipedia website can not be considered fully reliable evidence and Wikipedia cannot be treated as the professional source of information. The PPO noted that the fact that POLMOS was able to register the word mark “rectified spirit” in the United States has no impact on the examination of trademark application Z-204843, because the Polish system is completely autonomous. The PPO noted that even POLMOS is advertising its main product as a word-figurative trade mark, where both words are placed on the green-yellow label.

POLMOS filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 14 December 2009 case file VI SA/Wa 1859/09. POLMOS filed a cassation complaint.

The Supreme Administrative Court in its judgment of 18 May 2011 case file II GSK 553/10 dismissed the complaint. The Court cited the Dictionary of Polish language, published by PWN SA, the Internet edition, in which the word spirit is defined as a generic name of a specific type of alcoholic product – a high percentage water solution of ethyl alcohol. The word “rectified” is as an adjective derived from the noun “rectification” and it means the separation of liquid mixtures by repeated evaporation and condensation. The concept of rectification is commonly associated with a technological process, even if the recipient does not know the specific method. In conjunction with the first of the words in the trade mark in question it is associated with a way to produce a particular product. The two words – “rectified spirit” – contain only information about the type of product and how to produce it, and as such do not have sufficient distinctive character. The SAC shared in this regard the view expressed by the Supreme Administrative Court in its judgment of 18 June 2008 case file II GSK 185/08. See also “Trade mark law, case II GSK 185/08“. The Court ruled that there was no reason to assign a long use and the reputation only to the “rectified spirit” designation as separated from other elements of a word-figurative trade mark that was corresponding to the label on the bottle. The SAC noted that a trade mark is an indivisible whole. The use of a word-figurative trade mark does not mean that association between the word element and a particular entrepreneur arise in the minds of the consumer.

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 2154/10

June 23rd, 2011, Tomasz Rychlicki

The Polish Patent Office in its decision of June 2010 case file Sp. 334/05 invalidated the right of protection for the word-figurative trade mark CZUWAJ R-152214 (in English: “Be Prepared”) registered for Związek Harcerstwa Polskiego (ZHP). See “Trade mark law, case Sp. 334/05“. ZHP filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 14 April 2011 case file VI SA/Wa 2154/10 dismissed it. The Court agreed with the PPO that ZHP filed the questioned trade mark in bad faith. The VAC held that the trade mark application at issue violated the principle of free access to the scouting symbols that were traditionally used by different organizations. In 1990, the Polish legislator abolished this kind of “exclusive privilege” to use the symbols and insignia of the scout movement that was previously granted to ZHP. Despite the intentions of the legislator, ZHP somehow tried to restore this kind of monopoly by applying for the right of protection. The judgment is not final yet.

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.

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 II GSK 849/09

December 8th, 2010, Tomasz Rychlicki

In 2005 the Polish Patent Office registered “MASTER COOK JAPART” R-164044 trade mark for Przedsiębiorstwo Produkcyjno-Handlowo-Usługowe “JAPART” Zakład Pracy Chronionej from Panki. Podravka Prehrambena Industrija form Koprivnica, Croatia, the owner of “PODRAVKA VEGETA” R-138057 trade mark gave reasoned notice of opposition to the final decision of the Patent Office on the grant of a right of protection.

R-138057

The PPO in its decision of 13 June 2008 case file Sp. 523/06 ruled that “PODRAVKA VEGETA” is the reputed trade mark although Podravka Prehrambena also supplied very worthless evidence materials. However, the PPO agreed with the owner that its trade mark was introduced on the Polish market in 1994 which was properly supported by documents issued on 11 October 1994 by the company’s marketing department. From this date the reputation of the trade mark could have been created and the existence of reputation is established before the date of application for the trade mark. In case of “MASTER COOK JAPART” it was before 3 April 2002. Therefore, the PPO invalidated the right of protection. Japart filed a complaint.

R-164044

The Voivodeship Administrative Court in its judgment of 22 May 2009 case file VI SA/Wa 2147/08 dismissed it. The VAC came to the conclusion that Japart used a specific, multi-element composition of a reputed mark. The Court held that the likelihood of obtaining unfair advantage from the reputed trade mark is the obstacle that justifies the refusal to grant an exclusive right to sign that is identical or similar to the earlier a famous mark. It was therefore sufficient to assume that the applicant could use investments and financial efforts, which have previously been made by the owner of earlier trade mark to build an attractive image of the mark and attract customers. Japart filed a cassation complaint.

The Supreme Administrative Court in its judgment of 12 October 2010 case file II GSK 849/09 agreed with the VAC and dismissed the case. See also “Unfair competition, case I ACa 1270/10“.

Patent law, case file VI SA/Wa 595/10

November 22nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 30 June 2010 case file VI SA/Wa 595/10 held that the terms “solution of a technical nature” or “technology” are not defined in the European Patent Convention. Thus, the development of these concepts depends on the practice of the EPO. There is no doubt that in practice, the EPO is using much more liberal criteria for assessing the patentability of computer-implemented inventions than in the initial period of application of the EPC. However, this position was not accepted by all parties to the Convention. In addition, the Enlarged Board of Appeal on 12 May 2010, refused to resolve the problem presented by the President of the EPO, on the interpretation of the exclusion of computer programs “as such” in the context of the criteria for patentability of inventions relating to computer programs, leaving the question to practice. It can be concluded that the practice of liberalization of evaluation criteria for patentability of computer-implemented inventions was not accepted by all experts of the EPO. There are cases of the EPO that were based on the same provisions of the Convention but came with divergent decisions, as well as cases in which almost identical provisions of the Convention and national laws are interpreted, respectively, by the EPO or national bodies in different ways. This case concerned International Patent Application PCT/EP99/08958 “Record carrier, apparatus and method for playing back a record carrier, method of manufacturing a record carrier”. The judgment is not final yet.

Trade mark law, case VI SA/Wa 299/10

November 15th, 2010, Tomasz Rychlicki

On 14 March 2007, the Polish Patent Office registered word-figurative trade mark “Oxford Wielka Historia Świata” R-187352 for goods in Class 16 such as books and periodicals. The Polish company “Oxford Educational” sp. z o.o. from Słupsk was the applicant and the holder of the right of protection. The Chancellor Masters and Scholars of the University of Oxford (Oxford University Press) filed a request for invalidation. The OUP argued that it is obvious to everyone that Oxford is a place uniquely associated by the public around the world as the home of a famous university. Therefore marking the goods with a signs associated with Oxford – the seat of the famous University of Oxford – may mislead the public as to the true geographical origin of products. The OUP also pointed out that, with priority from 24 April 1995, is entitled to the rights of protection to three trade marks sharing the same verbal element, OXFORD, R- 103399, OXFORD UNIVERSITY PRESS R- 102351 and OXFORD ENGLISH R- 102350.

R-187352

The Polish company argued that the trade mark at issue does not refer to a geographical name of Oxford town, but to holder’s company name, and therefore it is not misleading. Oxford Educational also argued that the disputed sign was created in collaboration with an English company. The Polish Patent Office invalidated the right of protection. The PPO ruled that the conflicting trade marks are registered for identical goods, therefore, there is a risk of misleading the public as to their origin. Oxford Educational filed a complaint against this decision.

R-102350

The Voivodeship Administrative Court in Warsaw in its judgment of 13 May 2010 case file VI SA/Wa 299/10 dismissed the complaint and held that in case of a collision between a company name (the firm) and a trade mark that was registered with the “worse priority,” the priority shall be given to the right that was previously-formed. The mere registration of a trademark that is identical or similar to another company’s name (firm) does not provide even a breach of the rights to the company. However, the right to the company name would be infringed if the registration of a conflicting trade mark interferes with the exercise of this right. This distortion is misleading as to the identity of actors (acting under the company name and usign the sign) and therefore may jeopardize the company name. In case of a known, reputable, i.e. “strong” trade mark it means that the consumer awareness is associated with the recognized high-quality of products, derived from the manufacturer with high reputation. Thus, the registration of the questioned trade, and more – its application was made with a clear intention to benefit from the reputation of the OXFORD trade mark.

Trade mark law, case VI SA/Wa 203/10

October 11th, 2010, Tomasz Rychlicki

The Polish company INTERKOBO Sp. z o.o. filed a request for the invalidation of the right of protection for “kucyk pony” R-139097 trade mark registered for HASBRO POLAND Sp. z o.o. Kucyk means “pony” in Polish language. INTERKOBO argued that it has the legitimate interest in the invalidation proceedings because it is a manufacturer of toys, and it offers products such as toy ponies. In addition, in the cease and desist letter dated on 24 April 2007, HASBRO called INTERKOBO to stop the infringement of the right of protection for “kucyk pony” R-139097 trade mark which consisted of using by the INTERKOBO of “Princes’ s Pony” sign for designation of ponies’ toys. INTERKOBO argued also that HASBRO restricts the freedom of economic activity of its competitors, asking them to stop marketing of toys in the form of a small pony and requesting destruction of such products. By registering of the trade mark in question HASBRO had the intention of its use in isolation from the goods for which it was registered, and the intention of closing the access to the market for its competitors, the more that HASBRO as a professional market player should knew or should have known that the term “kucyk pony” as used for the toys in the form of a pony does not have any sufficient distinctiveness. INTERKOBO stressed that HASBRO Sp. z o.o. is a part of capital group operating on the global toys market, which is the position that allows it to dominate the market for local manufacturers of toys and contrary to the scope of the use made of registration to combat competition, which is contrary to the principles of the social coexistence.

HASBRO claimed that its sign is used on the Polish market, on the packaging of “kucyk pony” toys and other materials, since 1998 and is the subject of a number of marketing activities, and the brand “kucyk pony” includes not only toys, but also videos and a monthly magazine for children. HASBRO argued that its trade mark has a strong distinctive character and can be regarded as a reputable one, in relation to the goods it designates it has the so-called primary distinctive character.

The Polish Patent Office dismissed the request. INTERKOBO filed a complaint against PPO’s decision. The Voivodeship Administrative Court in Warsaw in its judgment of 24 June 2010 case file VI SA/Wa 203/10 affirmed this decision and dismissed the case. The VAC held that the trade mark in question is is a fanciful sign and has the primary distinctive character. It is not a generic name of any of the listed goods, and it does not inform about their properties. Pony (in Polish: kucyk) is the generic name of the horse species while it is not the name of the goods protected by the trade mark, which goods do not have any direct connection with any species of horses.

Trade mark law, case VI SA/Wa 839/09

August 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative in its judgment of 5 August 2010 case file VI SA/Wa 839/09 decided on the complaint of the holder of the Polish trademark registration DSC R-82966 against the decision Sp. 2/98 of the Polish Patent Office of 28 January 2009 on invalidation of this trademark.

R-82966

The VAC has not examined substantive issues of the matter because as it has stated the decision of the Polish Patent Office is too general and it does not specify documents on which the Polish Patent Office has based its findings. In the Court’s opinion the Polish Patent Office quoting his findings has only used the phrase “it results from the submitted documents that…”, instead of giving precise description of each relevant document, which prevents the Voivodeship Administrative Court from presenting its opinion on the correctness of the questioned decision. In view of above, the complaint has been accepted and the matter has been transferred to the Polish Patent Office for reexamination.

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.

Trade mark law, case VI SA/Wa 173/10

July 18th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 21 May 2010 case file VI SA/Wa 173/10 held that the statutory condition for the lapse of the right of protection is intended to eliminate the rights of protection granted to those signs that are not actually used in trade. The grant of the protection for a trademark is associated with the statutory obligation of genuine use of the mark for goods and services for which the trade mark is registered. It cannot be used symbolically, only to maintain the rights of registration. This case concerned the proceedings on lapse of the right of protection for “transpak gotuj ze smakiem” R-129729 trade Mark owned by Grajewski Zbigniew, Przedsiębiorstwo Produkcyjno-Usługowo-Handlowe TRANSPAK from Puszczykowo.

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.

Trade mark law, case II GSK 156/09

December 12th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 16 October 2008 case file VI SA/Wa 927/08 dismissed the complaint against the decision of the Polish Patent Office on the refusal to decide on the lapse of the right of protection of GAP R-171132 and GAP R-171135 trade mark owned by GAP (ITM) INC. Przedsiębiorstwo Prywatne GAPPOL Marzena Porczyńska who was the applicant in the case before the PPO, filed a cassation complaint against this decision.

The Supreme Administrative Court in its judgment of 15 October 2009 case file II GSK 156/09 dismissed the compliant and held that pursuant to Article 315(1) of the IPL, the provisions of the old Trade Marks ACT are used to assess the effects of legal events occurring during their validity, while the effects of legal events that occurred after 22 August 2001, should be assessed under the provisions of the IPL, also when they related to the existing rights. To assess the effects of the expiry of the period/deadline that was required for recognizing the request to decide on the lapse of the right of protection as effective – if such a request was made after 22 August 2001, the provisions of the IPL should be used.

The Court held that in favor to adopt the date of issuance of the decision granting a right of protection as the starting point of the five-year period referred to in Article 169(1)(i) of the IPL, speaks the literal interpretation of this provision.

Article 169
1. The right of protection for a trademark shall also lapse:
(i) on failure to put to genuine use of the registered trademark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exist.

The SAC reached such conclusions because the “registered trademark” as referred to in this article, appears only after the decision in the matter was issued, and not on the date of filing a trade mark application.