Polish IP & IT law – copyright trademark computer internet telecomm

Archive for: Art. 315 IPL

Trade mark law, case II GSK 270/12

September 24th, 2013, Tomasz Rychlicki

The Polish company INTERKOBO sp. z o.o., the owner of word trade mark MYBABY R-148924 registered for goods in Class 28 such as games, toys, sporting goods, requested the Polish Patent Office to invalidate in part the right of protection for the word-figurative trade mark MY SWEET BABY R-187751 registered for goods in Classes 12, 20, 25 and 28, and owned by PEXIM Artur Kamiński. INTERKOBO claimed high recognition of the MYBABY reputed trade mark among buyers of children’s toys and a high degree of similarity between the goods. The company noted that since 15 years it is one of the largest importers of toys in Poland. PEXIM argued that its trade mark is registered in class 28 for goods such as children’s toys – dolls, doll beds, cradles for dolls, doll furniture, doll clothing. PEXIM operates since 15 June 2001, and its activity is the manufacture of wicker and wood, which are exported. Wickerworks are made for young children. These are strollers, cribs and miniatures of these products as toys for children. The products are bearing a trade mark and a company name, therefore, the risk of confusion is excluded.

R-187751

The Polish Patent Office invalidated the right of protection in part of goods in Class 28. The PPO ruled that both trade marks are used to designate similar goods. The dominant element in both signs is the word baby, because it is a base or core to the other words, and in particular, their meanings so it shows that the these trade marks have a similar range of meaning, therefore there is a high risk of association by the public between the marks, and the likelihood that the consumer may be confused as to the origin of goods. PEXIM filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 29 September 2011 case file VI SA/Wa 1407/11 dismissed it. The Court ruled that the PPO properly carried out the proceedings and correctly interpreted the law. According to the Court there was homogenity of goods in Class 28, and even the identity of the goods, because the Nice Classification was subject to change over the years, but the changes did not have any historically impact on the signs and the goods offered. The difference of one word that occured in the compared signs was so unimportant that it did not make them different enough to rule out the risk of confusion in the ordinary course of trade. PEXIM filed a cassation complaint, and additionally, a motion to stay the execution of the decision. The Company argued that the contested decision involves very high cost and its implementation would include a very serious consequences for its economic activity, and thus would cause irreparable consequences and expose the company to serious losses.

The Supreme Administrative Court in its order of 27 July 2013 case file II GSK 270/12 dismissed the motion. The SAC ruled that PEXIM, despite its obligation to submit such evidence, has not shown the existence of statutory grounds that would allow to stay the execution of the contested decision. According to the Court, PEXIM only claimed very serious and irreparable consequences and big losses. Meanwhile, while citing in support of the motion specified circumstances, the Company should be able to substantiate their occurrence, thus going beyond the vague and unsubstantiated claims. By pointing to difficulties to reverse the effects of the contested decision, PEXIM did not substantiate the existence of conditions justifying the stay of execution. Therefore, the Court had no chances for the objective assessment. The arguments that the stay of execution of the decision does not endanger the health or human life, and it is not associated with exposure to the national economy from heavy losses, as well as it does not affect the party’s interest, were during the assessment of the motion irrelevant, since it is not a ground for staying the execution that is provided for in the Polish Law on Proceedings Before Administrative Courts. The SAC held that a reference to likely allegations that were raised in the cassation complaint cannot determine the stay, since at this stage it would be pointless and premature. The Court also noted that the order to stay the execution can be amended or repealed at any time if circumstances of the case change. The party seeking for the amendment or repeal of a decision or action, should demonstrate such a change of circumstances that would make its request justifiable and well-founded.

Trade mark law, VI SA/Wa 1962/07

January 22nd, 2013, Tomasz Rychlicki

The Polish company Zakład Gospodarki Komunalnej Organizacja Odzysku Biosystem S.A. requested the Polish Patent Office to take a decision on the lapse of the right of protection for IR-653449 and IR-585713 trade marks registered for goods in the following Classes 1, 2, 3, 5, 6, 7, 8, 9, 11, 16, 20, 21, 24, 25, 29, 30, 32, 34, 35, 36, 39, 40, 42. Both trade marks are owned by Der Grüne Punkt Duales System Deutschland GmbH.

IR-653450

In support of its legal interest, Biosystem S.A. explained that it is one of more than 30 domestic companies that are specializing in recovery of certain categories of waste and like other market participants have the right to use the informational signs. While Rekpol S.A., being the sole licensee of Der Grüne Punkt Duales System Deutschland GmbH trade marks, is sending C&D letters to different businesses, including Biosystem S.A. According to Biosystem the questioned trade marks are spread and used among various companies and as the result of negligence of the owner and licensee these signs cannot fulfill the functions to designate the origin of a particular entrepreneur and have degenerated in respect of all goods and services and become a carrier of information in trade that the product bearing the mark shall be recovered.

IR-653449

The PPO decided that the Polish company had no legal interest (but only factual one) in all classes of goods since it produces none of the goods covered by the protection right (and it doesn’t not sell them), but only provides services related to recovery of certain categories of waste. The PPO only agreed that Biosystem S.A. has shown legal interest in seeking the lapse of the disputed trade mark registration in part, on all services (i.e., services included in Classes 35, 36, 39, 40, 42). In this respect, the PPO considered that the interest can be inferred from the principle of freedom of establishment guaranteed in the provisions of Article 20 of the Polish Constitution and Article 6 of the Act of 2 July 2004 on Freedom of Economic Activity. Biosystem filed a complaint against this decision.

The Voivodeship Administrative Court in its judgments of 15 April 2008 case file VI SA/Wa 1959/07 and VI SA/Wa 1960/07 held that the definition of waste and recycling, shows that waste are the goods. Thus, in the view of the Court it was possible to trade in such goods. The court held that it may be that the scope of activities of Biosystem S.A. include those goods. Hence the need to examine the legal interest in the classes of goods. Legal interest shall be tested at the beginning of hearings, therefore, the VAC did not address the merits of the dispute. The Court ruled that the repealed decisions of the Polish Patent Office should not be enforceable.

The Voivodeship Administrative Court has also decided on other PPO’s decisions with regard to IR-585714 and IR-653450 trade marks and held the same in its judgments of 24 April 2008 case file VI SA/Wa 1961/07 and VI SA/Wa 1962/07. All four cases went back to the Polish Patent Office.

Again, Biosystem argued that the characters have lost their distinctiveness, as they appear on millions of packages of goods from various manufacturers. The company cited a research institute Pentor that consumers do not identify these signs with a particular trader. They are applied by different manufacturers for packaging and currently only indicate that they are subject to disposal (safe for the environment). Biosystem claimed that information as such cannot serve as trade mark and the sign does not identify an entrepreneur.

Der Grüne Punkt-Duales System Deutschland and Rekopol noted that they were active in defending these trade marks against the lapse, because both companies warned many entrepreneurs, that Grüne Punkt trade marks cannot be used without a proper license. In this way, both companies care about the protection of the brand which excludes the possibility of the lapse due to lack of distinctive character. The Polish Industrial Property Law clearly states that the loss of the distinctive character must be the consequence of the owner’s acting or negligence.

The Adjudicative Board of the PPO in its decisions of July 2010 case no. Sp. 363/08 and case no. Sp. 433/08 and ruled on the lapse of the right of protection. The PPO agreed with the argument that Grüne Punkt trade marks became very popular in many markets, especially in Europe. According to the case file, there are around 95,000 licenses granted all over the world for their use, and for example, in Western Europe, they are placed on almost 91% of the packaging. Such method of placing trade marks on a variety of products that originate from different manufacturers does not meet the conditions of the genuine use of the mark in its function.

The Voivodeship Administrative Court in Warsaw in its two judgments of 9 March 2011 case file VI SA/Wa 2169/10 and case file VI SA/Wa 2171/10 dissmissed complaints filed by Der Grüne Punkt-Duales System and Rekopol. Both companies filed cassation complaints. The Supreme Administrative Court in its judgments of 21 November 2012 case file II GSK 1551/11 and case file II GSK 1646/11 dismissed them both which in consequence lead to the final lapse of both trade mark rights on the Polish territory.

Trade mark law, case II GSK 1563/11

October 30th, 2012, Tomasz Rychlicki

The Voivodeshipp Administrative Court in Warsaw its judgment of 21 December 2010 case file VI SA/Wa 1579/10 dismissed the complaint filed by the Polish company Dimyat Polska Sp. z o.o. against the decisions of the Polish Patent Office on the refusal to grant the right of protection for the word trade mark PLISKA Z-135975 applied for the goods in Class 33 such as alcoholic beverages, wines, liqueurs, cognac, brandy, vodka, spirits. The PPO decided that the applied trade mark is devoid of sufficient distinctive character, because it does not individualise the goods on the market. The sign Pliska has no distinctive graphics, does not have any distinguishing features that would help to identify the manufacturer of the goods. Pliska is the name of the village in Bulgaria, in the Shumen district. It is not a fancy designation, but a sign informing about the geographical origin. The first figurative trade mark Pliska has been applied in the Republic of Poland in 1962 by the Bulgarian company. Since then alcohol products bearing Pliska trade mark have been introduced on different markets, among others, the Polish one. In addition, the PPO noted that the mark applied sign may contain inaccurate information, as it may cause confusion of the average consumer as to the origin of goods. The recipient who are buying alcoholic beverages bearing Pliska sign would believe that they were produced in Bulgaria. The Court agreed with the PPO and supported its view with the arguments included in the judgment of the Court of Justice of the EU of 4 May 1999 in joined cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions.

Dimyat Polska Sp. z o.o. filed a cassation complaint. The company argued inter alia that the decision in this case was issued by a person whose mother in law sat in the panel of the judges in the VAC. At the hearing before the Supreme Administrative Court, the counsel for the PPO acknowledged that the decision of the first instance in the Patent Office was issued by an expert who is daughter in law of one of the judges.

The Supreme Administrative Court in its judgment of 28 September 2012 case file II GSK 1563/11 overturned the judgment of the VAC and sent it back for further reconsideration. The SAC held that despite the merits of the cassation complaint, there was a condition of nullity of the proceedings. The Polish Act on Proceedings Before Administrative Courts states that a judge is excluded in deciding a case in matters that concern his or her relatives in a straight line and in-laws to the second degree. In the present case, the mother-in-law is a first-degree relationship. The institution of exclusion of a judge is a procedural guarantee which consist of the impartiality of the judge that is identified with objectivity of the proceedings. The impartiality of judges is this kind of value for which the protection and execution is particularly important in a democratic state of law. Such defined impartiality should be identified with objectivity that is expressed in the equal treatment of the parties of any proceedings, so that there is no favorable situation for any of them. The court proceedings must be conducted in such a way that there is not even an apparent impression of behavior that would be deemed as disregard of standards of impartiality, being a manifestation of judicial independence.

Trade mark law, case II GSK 883/11

September 3rd, 2012, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 827/10“. INTER GLOBAL decided to file a cassation complaint against the judgment of the Voivodeship Administrative Court of 29 October 2010 case file VI SA/Wa 828/10 that upheld the decisions of the Polish Patent Office of 16 October 2009 case no. Sp. 449/05, in which the PPO invalidated the registration of the word-figurative trade mark TEMPO R-104245 because it was applied for in bad faith.

R-154752

The Supreme Administrative Court in its judgment of 9 May 2012 case file II GSK 883/11 dismissed the appeal. The Court noted that there was some sense in INTER GLOBAL’s legal arguments that there is a need to provide legal certainty in a situation where the disloyal agent used the trade mark of a foreign entrepreneur who was conscious of this fact, even if the trade mark was applied for registration in bad faith. However, the Court held that the protection of property rights against actions taken in bad faith is so extended that it will undoubtedly take precedence over considerations on legal certainty resulting from the long-term use of the mark. This rule will not be changed by the argument that the disloyal agent promoted the foreign trade mark and incurred significant expenses. The Polish legislator adopted the ban on registration of signs that were applied in bad faith as one of the main principles of industrial property law, so there is not any possibility of legalization of any unethical actions, even qualified, because characterized by bad faith of professional entities that are involved in business activities. Because of the legal certainty of market turnover, a foreign rightful owner of a trade mark used by another entity, will not be able to demand the invalidation of or to oppose the use of a later trade mark, in a situation in which the use of the later sign has been knowingly tolerated for a limited time, at least of 5 consecutive years, unless the application for registration of the later mark was made in bad faith. At the same time it should be noted that the registration of a trade mark that belongs to foreign trade partner by his disloyal agent without the consent is not always deemed as an act of bad faith. Although the cases in which an agent acting without the authorization of the proprietor will not be acting in bad faith are veru limited, however, such situations may occur. The court also said that the acceptance of INTER GLOBAL’s argument would lead to a situation of unequal treatment of foreign entrepreneurs compared to those operating in Poland. If, as the Polish Industrial Property Law rules only apply to relationships between a Polish agent and foreign entrepreneur, it would allow for an unlimited in time option of invalidation of the registered trade mark that was applied in bad faith (that option lapse after 5 years of the use of such mark, with the knowledge of a foreign entrepreneur), in the situation of the agent and a company operating in Poland. The company operating in Poland and being in the agency relationship with another entrepreneur (agent) could, therefore request for the invalidation of the signs registered by the latter in bad faith at any time. The foreign entrepreneur represented by a Polish disloyal agent would be deprived of such a right.

Trade mark law, case VI SA/Wa 1616/11

August 28th, 2012, Tomasz Rychlicki

On May 2008, the Polish Patent Office granted the right of protection for the word-figurative trade mark V V V.V. MOTOR R-205440 for goods in Class 12. This sign was applied for by FUSAN HANDICRAFT Co. from Taiwan. On April 2009, Volkswagen AG filed a notice of opposition to the decision of the Patent Office. VW argued that the trade mark in question is similar to its well-known and reputed CTM, and the reputation is obvious and does not require any evidence. After careful examination of the case, the PPO invalidated the right of protection. FUSAN HANDICRAFT Co. filed a complaint against this decision.

R-205440

The Voivodeship Administrative Court in its judgment of 18 November 2011 case file VI SA/Wa 1616/11 dismissed the complaint. The Court ruled that despite the editorial differences in the lists of goods of compared trade marks, the PPO correctly decided that some of the goods are to be regarded as identical. The Court agreed that the dominant element of the trade mark at issue was a composition of graphics and letters placed in the circle. That was another argument in favour of finding the similarity of signs. So the phonetic differences resulting from the different pronunciation of the letters “VV” and “VW” did not neutralize the visual similarity between the marks. The Court did not agree with the argument that the PPO failed to properly assess the similarity of the goods. The PPO did not examine too broadly the comparable lists of goods, becasue there was no doubt that VW using the priority, had the chance to seek for the broader protection for its trade mark.

Procedural law, case VI SA/Wa 1239/11

August 7th, 2012, Tomasz Rychlicki

On 1 March 1994, the company France-Euro Agro applied to the Polish Patent Office for the registration of the word trade mark SOBIESKI Z-130304 for goods in Class 33 such as alcoholic beverages except beer. In its decision of March 1997, the PPO refused to register the applied trade mark because of the similarity with the word-figurative trade mark A SOBIESKI POLISH VODKA R-85456 that was registered with the earlier priority for the same goods in Class 33. This trade mark is currently owned by BELVEDERE S.A. France-Euro Agro withdrew its request for re-examination of the case. However, on December 2005, BELVEDERE requested the PPO to repeal the refusal based on the provisions of Article 154 § 1 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, published in 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.

A final decision, on the basis of which none of the parties acquired any rights, may be at any time repealed or amended by the public administration authority which issued the decision or by the authority of higher level if it is justified by the public interest or fair interest of the party.

The Company noted that the risk of misleading potential consumers has been eliminated as the owner of both trade marks is now the same entity. BELVEDERE argued also that the PPO does not respect the constitutional rule of law and equal treatment of entities in the application of law, because it has registered three word-figurative trade marks Jan III Sobieski SJ for BRITISH AMERICAN TOBACCO POLSKA TRADING Sp. z o.o., despite the existence of the earlier right of protection for the trade mark A SOBIESKI POLISH VODKA R-85456. The PPO refused to repeal the decision of 1997. The PPO emphasized that decisions taken in such proceedings are discretionary, which means that the PPO examines, whether in the particular situation, the public interest or the fair interests of a party is in favor of the repeal of the final decision. The requirements of public interest or the interests of the parties must be assessed on an individual case and must receive individualized content, resulting from the factual and legal issues. The interest of the party should be “fair” within the objective meaning i.e. it has to be justified by circumstances of the case and accepted under applicable law, also from the standpoint of public interest. According to Polish legal doctrine, the term “public interest” is not defined by the law, and the content of this concept is given by the adjudicating body. The scope of the discretion of the administrative body during the recognition of such issues is limited, for instance by the existence of general principles of administrative proceedings, such as the public interest and fair interest of citizens. The fair interests of citizens is not only deemed as the interest of parties involved in this particular case, but also the interests of other parties to the proceedings before the Patent Office, in this case those who have applied for trade marks after the refusal of March 1997. By withdrawing the request for re-examination of the matter, France-Euro Agro waived its right to appeal, which led to the ultimate end of the proceedings and allowed other entities to apply for trade mark protection. BELVEDERE filed a complaint against this decision.

R-85456

The Voivodeship Administrative Court in Warsaw in its judgment of 7 December 2011 case file VI SA/Wa 1239/11 dismissed it and held that the proceedings to repeal the final decision should not be regarded as a retrial of the case. The Court held that both the institution of proceedings de novo, as well as the repeal of the final decision, are procedures used to verify the faulty decisions, that allows for setting the decision aside, in the situations specified by law, despite its finality. Given the exceptional nature of these procedures, they cannot be abused by a broad interpretation of the conditions of admissibility of their application. The overriding principle is to guarantee the sustainability of the final administrative decision. The Court agreed with the PPO that BELVEDERE could file requests for the invalidation of the rights of protection for trade marks JAN III SOBIESKI JS.

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 problems of interpretation arise 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 the word-figurative trade mark MASTER COOK JAPART R-164044 for Przedsiębiorstwo Produkcyjno-Handlowo-Usługowe “JAPART” Zakład Pracy Chronionej from Panki. Podravka Prehrambena Industrija form Koprivnica Croatia, the owner of the word-figurative trade mark “PODRAVKA VEGETA” R-138057, 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 no. 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 Court 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 II GSK 85/11

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 the International Patent Application PCT/EP99/08958 “Record carrier, apparatus and method for playing back a record carrier, method of manufacturing a record carrier”.

The Supreme Administrative Court in its judgment of 19 March 2012 case file II GSK 85/11 reversed the contested judgment and the decision of the PPO. The Court held that the decree of the President of the Polish Patent Office on the patentability of inventions has an internal character, and it can not be the basis of the justification of the decision.

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

November 15th, 2010, Tomasz Rychlicki

On 14 March 2007, the Polish Patent Office registered the 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 with 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. The Court 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 the trade mark kucyk pony R-139097 that was 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 trade mark “kucyk pony” R-139097 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 trade mark 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.

R-149940

The Supreme Administrative Court in its judgment of 13 May 2010 case file II GSK 608/09 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC 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.

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 the trade mark CARLO BOSSI R-149940 that was registered for goods in Class 3 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.

Patent law, case VI SA/Wa 2279/08

October 27th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 27 May 2009 case file VI SA/Wa 2279/08 ruled that the Polish Patent Office is not an authority that mechanically approves patents granted by the EPO. The Court held that if the dispute between the applicant and the Polish Patent Office related to the nature of the invention, as is was in this case, by refusing to grant a patent, the Patent Office in principle cannot merely on its own conviction as to the subject of the patent application. The PPO should seek to gather sufficient evidence to support its position. Such evidence could include witness-expert testimony. The absence of a comprehensive hearing of evidence and basing the questioned decisions mostly on its own belief in the recognition, what is the subject of the patent application, and such a situation took place in this case, justified the infringement of Articles 7, 77 § 1 and Article 107 § 3 of the APC, as having a significant impact on the outcome of the case.

Article 7
Public administration bodies shall uphold the rule of law during proceedings and shall 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.

(…)

Article 77.
§ 1. The public administration body is required to comprehensively collect and examine all evidential material.
§ 2. At each stage of proceedings a body can amend, supplement or withdraw rulings made regarding the examination of evidence.
§ 3. An body conducting proceedings as a result of having been required to do so by the body having jurisdiction to settle the case (Article 52) may, on an ex officio basis or on application by one of the parties, hear new witnesses or experts on circumstances that form the objects of such proceedings.
§ 4. Universally accepted facts and facts known to the body ex officio do not require proof. Parties to proceedings should be informed of facts that are known to the body.

(…)

Article 107.
§ 1. A decision should contain: the name of the public administration body, the date of issue, the name(s) of the party or parties, the legal authority referred to, a ruling, a factual and legal justification, an advisory notice as to whether and how an appeal may be brought and the signature, name and position of the person authorised to issue the decision. Any decision which may be challenged by a petition to the civil court or a complaint to the administrative court should contain an advisory notice that such a petition or complaint may be brought.
§ 2. Other regulations may contain other elements which a decision should contain.
§ 3. The factual justification of the decision should contain the facts that the body 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.
§ 4. If the decision fully reflects the demands of the party then there is no need to provide a justification for the decision, but this does not apply to decisions in contentious cases and decisions given on appeal.
§ 5. A body can also dispense with a justification of a decision in such cases if under current statutory regulations there is a possibility of dispensing with or limiting the justification because of the interests of State security or public order.

The Court ruled that the PPO should make a thorough analysis of the concept of “technical character of the invention” and should indicate why it interprets it very narrowly, taking in this respect the view of the EPO. The PPO should also consider whether the European patent has been granted for the same solution, and examine the merits of different assessment of the invention in Poland. During the re-hearing of the case the PPO will will take the position whether the applied solution has been sufficiently disclosed, and if so, only then will further examine its patentability, given that one of the elements of assessing the patentability of the invention is a technical solutions. Due to the lack of legal definition of a “solution of a technical nature” in assessing a technical nature of the present invention the PPO is obliged to indicate what in the opinion of the PPO is deemed as “technical solution”. The PPO will assess the technical nature of the claimed invention and will refer to the applicant’s arguments, if the interpretation of that concept made by the PPO would continue to differ on how this concept is understood to the applicant.

Trade mark law, case VI SA/Wa 1486/08

June 17th, 2009, Tomasz Rychlicki

On 17 February 2005, Société des Produits Nestlé S.A. from Vevey applied to the Polish Patent Office to register the word-figurative trade mark Frappé Z-291280 for goods in class 30. On August 2005 Nestlé filed a request for invalidation of the right of protection of the FRAPPE R-13842 trade mark, registered for goods in class 30 and 32 owned by Polish company “MASPEX” Spólka z o.o. form Wadowice. Nestlé based its request on provisions of Article 7(2) and Article 8(3) of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

(2) A sign shall not possess sufficient distinctiveness if it simply constitutes the generic designation of the product, if it simply makes a statement as to the properties, quality, number, amount, weight, price, purpose, manufacturing process, time or place of production, composition, function or usefulness of the goods or any similar information that does not enable the origin of the goods to be determined

Article 8(3)
A trade mark shall not be registrable if:
iii) it contains incorrect statements;

Nestlé argued that the word “frappe” is a generic term, widely used in trade, as a sign for chilled coffee beverages. The company based its legitimate interest to have standing in proceedings before the Polish Patent Office on the principle of freedom of access to the indications that have descriptive meaning. In addition, Nestlé informed the PPO that it had sent a warning letter to Maspex because the Polish company had introduced to the market a product with similar name. In Nestlé’s opinion the exclusive right granted to Maspex to mark its products with the word “frappe” was a “unlawful constitutional restriction”. After the hearings and careful analysis of the evidence provided by both parties, the PPO found that the word FRAPPE (even being foreign word) was a term used widely to describe the properties of a beverage (cold, frozen, with ice cubes), especially of coffee, or to determine the type of coffee and it could not serve as sign capable of distinguishing goods of one entrepreneur from goods of another entrepreneur in normal market conditions. The PPO also shared Nestlé’s position based on the article 8(3) of the TMA that the wide range of names of goods covered in the registration of the contested trade mark are not frappe. Maspex filed a complaint.

The Voivodeship Administrative Cout in Warsaw in its judgment of 12 October 2008 case file VI SA/Wa 1486/08 fully agreed with the PPO’s decision and dismissed the complaint.

Trade mark law, case II GSK 31/06

May 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 8 April 2009 case file VI SA/Wa 2258/08 anulled the Polish Patent Office’s decision from 2007 and ordered the PPO to reconsider the invalidation of the brothers’ Miś trade mark. The Court ruled that a company name (the firm) serves to identify and to individualize an entrepreneur in legal and business market turnover, containing information about the characteristics and attributes of someone’s business. The finding that there was an infringement of these elements determines the recognition that there was an infringement of the law. However, infringement cannot be determined by the trade mark registration (even the later one) that was similar to the company name.

The Supreme Administrative Court in its judgment of 6 October 2008 case file II GSK 406/08 ordered the VAC to reconsider the case. See “Trade mark law, case II GSK 406/08“.

As the Supreme Administrative Court ruled in its judgment of 26 April 2006 case file II GSK 31/06, the exclusive rights to the “firm” (company name) are not absolute, and the limits of its extent are set by the territory a firm operates, the subject of actual business activities of the company that is using given firm. In fact, only within these limits a conflict between similar company name (the firm) and trade mark may occur. The Court, citing the earlier judgment of the Voivodeship Administrative Court in Warsaw of case file 6 II SA 2757/02, ruled that the PPO had to consider if the registration of a disputed trade mark prevents other market participants from use a sign which has a purely informational meaning.

Trade mark law, case II GSK 764/08

May 22nd, 2009, Tomasz Rychlicki

In March 2007 the Polish Patent Office issued a decision invalidating the right of protection for the trade mark OFF THE LIP R-153658 owned by Polish company PREMIERE Spólka z o.o. from Chorzów, registered for goods in classes 18 and 25. The request for invalidation was brought before the PPO by German entrepreneur Kurt Wendler-Rothenberger, who owned two German trade mark registrations for OFF THE LIP RN-1120143 and RN-2015151. The request was based on article 8(i) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with later amendments:

A trade mark shall not be registrable if:
(i) it is contrary to law or to the principles of social coexistence;
Mr. Wendler-Rothenberger claimed that he had business relationships with the Polish company in the period from 1992 to 1996. In PPO’s opinion it had been proved that Polish company was fully aware of the fact that OFF THE LIP sign belongs to another entity, and such action of submitting someone’s else trade mark for registration in the Republic of Poland was contrary to the principles of good conduct in trade.

The Polish company brought a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 24 January 2008, act signature VI SA/Wa 1394/07 dismissed it, and ruled that all procedural matters have been sufficiently and thoroughly investigated and determined by the Polish Patent Office. The Court acknowledged that, from the beginning, the Polish company knew that OFF THE LIP sign was somebody else’s property — that of its contractor and business partner. In the court’s assessment it was a classic example of bad faith, since PREMIERE was aware that it does not have the right to this sign and even if it could not be aware – it should have known about that.

PREMIERE Sp. z o.o. filed a cassation complaint. The Supreme Administrative Court in its judgment of 12 March 2009 case file II GSK 764/08 rejected the complaint and ruled that the provision of article 8(1) of the TMA provides an independent and sufficient condition for the inadmissibility of the registration of a sign, and it’s in any way unrelated to the exclusive protection of marks registered and benefiting from protection in a given country. The SAC clearly held that filing a trade mark application of someone else’s sign when a special relationship of trust existed between parties of a contract, is a classic example of behaviour contrary to the principles of social coexistence.

Trade mark law, case II GSK 385/08

November 14th, 2008, Tomasz Rychlicki

On 26 June 1996 the Polish company “Sniezka” Chłodnia from Częstochowa applied for the figurative trade mark in Class 30 for goods such as ice creams. The graphic represented a black boy’s head. On 10 September 2001, the Polish Patent Office granted the right of protection R-132332.

R-132332

On 31 July 1998, the Lodmor company from Gdansk applied for word-figurative trade mark “calypso lody smietankowe waniliowe LODMOR” Z-190131 in class 30 for goods such as ice creams, ice cream powder, ice cream binders. The PPO rejected Lodmor’s application justyfing its decision on priority of the “Sniezka” company’s trade mark.

Z-190131

Lodmor filed a request for trade mark invalidation. The company from Gdańsk claimed that “Sniezka” illegally appropriated a sign of a black boy’s head, which was put on Calypso ice creams in the ’70s and ’80s by companies that were part of the Union of the Freezing Industry (Lodmor is a legal successor of one of them). The PPO has invalidated “Sniezka” trade mark in 2006. The Office ruled that this sign was registered in contrary to principles of merchant’s honesty because the mark was already used for a long time by other entrepreneurs.

“Sniezka” Chłodnia company appealed. The Voivodeship Administrative Court in Warsaw in its judgment of 17 October 2007 case file VI SA/Wa 1005/07 held that Lodmor had no legal interest in filing a request for trade mark invalidation. The Court annulled PPO’s decision. The VAC held that the concept of legal interest in invalidation proceedings can not be derived from the fact that one company applies for a trade mark protection and there is an obstacle in the form of earlier registration. Such conclusion would lead to negation of principles that are the basis for granting rights for trade mark protection. In this case the interest involved only economic issues.

Lodmor filed a cassation complaint. The Supreme Administrative Court in its judgment of 23 October 2008, case file II GSK 385/08 agreed with Lodmor’s arguments that VAC only referred to the trade mark application and it did not consider Lodmor’s legal interest. The SAC already issued decisions and opinions as regards the breach of principles of mercantile honesty and the bottom line of each ruling was that, in specific circumstances, a legitimate interest of a competitor may be found, as it was in Lodmor’s case. The Court held that every entrepreneur has the right to designate its products and services, with a trade mark, if it does not remain in conflict as to the form, duration and territorial aspect, with the absolute right that was previously obtained by another entity. An entrepreneur has a legal interest in the request for invalidation of the right of protection for a trade mark on the basis of circumstances provided in the request and conditions included in such a motion if the right of protection was granted in violation of the statutory requirements. The relevance and application of these conditions shall be assessed in proper proceedings. Therfore, the SAC returned the case to VAC for further reconsideration.

Trade mark law, case II GSK 406/08

October 28th, 2008, Tomasz Rychlicki

The MIŚ company has operated on the Polish market since 1956 in the form of an “industrial plant”, but until 1978, it used the name “Wojewódzki Zwiazek Gminnych Spóldzielni Samopomoc Chlopska-Zaklad Wyrobów Cukierniczych Miś” in Oborniki Śląskie. The complex name was changed to “Spóldzielnia Pracy Produkcyjno Handlowa MIŚ” in 1978 and again to “Zaklady Wyrobów Cukierniczych MIŚ” in 1992.

R-90583

Włodzimierz Miś and Jerzy Miś – “Bracia Miś” (Bear’s brothers) have started their activity in 1989. They use a single word “Miś” (bear) as their company name and produce confectionery since 1993. “Bracia Miś” have applied for the word-figurative trade mark “Mis” in 1992. The Polish Patent Office has granted the protection right in 1995 under the no. R-83022. The Company from Oborniki Slaskie received trade mark protection right for the figurative sign consisting of bear’s head in 1996 under the no. R-90583.

R-83022

Zaklady Wyrobów Cukierniczych MIS filed a request for invalidation of the right of protection of “Bracia Miś” trade mark. The PPO agreed and invalidated the contested trade mark in 2001 for the first time. The case went for the appeal to the Voivodeship Administrative Court in Warsaw which annuled the PPO’s decision. The Administrative court pointed that Polish Patent Office did not properly justified its decision and did not consider judgments of two civil courts that previously ruled in case of “Bracia Miś” and Zaklady Wyrobów Cukierniczych MIŚ as regards similarity of both signs and the use of “Bracia Miś” trade mark as a company name (a short explanation: Polish civil courts decide trade mark infringement cases while administrative courts decide appeals and cassation complaints related to administrative procedure and cases before PPO).

Once again, the PPO invalidated “Bracia Miś” trade mark in 2007. The Office ruled that the registration should not be allowed because it violated personal rights of Zaklady Wyrobów Cukierniczych MIŚ – the right to a company name – which enjoyed a long tradition and reputation. Again, the case went for an appeal to VAC. Trade mark attorney who was representing “Bracia Miś” presented arguments that their products are only sold in company’s owned shops and there is no risk of consumers confusion. The Voivodeship Administrative Court in Warsaw in its judgment of 22 October 2007 case file VI SA/Wa 921/07 did not follow such arguments so the case went to the Polish Supreme Administrative Court as cassation complaint. The SAC agreed with “Bracia Miś” and held that the PPO did not indicate on which evidences the annullement was based in its decision and that the PPO failed to comply with regulations provided in the Code of Administrative Procedure. The VAC by accepting PPO’s decision has failed to comply with administrative proceedings rules which which in consequence was the reason to invalidate VAC’s judgment.

The judgment of the Supreme Administrative Court of 6 October 2008 case file II GSK 406/08 is final and binding. It means that the Voivodeship Court has to annul the Polish Patent Office’s decision from 2007 and order the PPO to reconsider the invalidation of “Bracia Mis” trade mark. See also “Trade mark law, case VI SA/Wa 2258/08“.

Trade mark law, case VI SA/Wa 845/05

June 9th, 2008, Tomasz Rychlicki

The Company Valentino filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection for Valentino R-137628 trade mark that was registered in Classes 35, 39 for Orzechowski Wiesław Firma ASTRO from Gdynia. Valentino argued that Astro infringed on the principles of social coexistence, as it sought to use the reputation of the trademarks and trade names owned by Valentino. Granting the right of protection, thus placing on the same field of economic activity a very similar trade mark would threaten the interests of Valentino, and it would be also contrary to the institution of a trade mark.

IR-645346

The PPO dismissed the opposition and ruled that Valentino did not prove the reputation of its trade marks and due to the different classes there is no risk of consumers confusion, however the goods and services are complementary. The PPO noted also that the questioned trade mark differs from these owned by Valentino because elements such as V, Val, or Zone are exposed which makes them the dominant elements in these trade marsk, and they attract the attention of the public, turning their attention from the less visible Valentino word. Valentino filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 8 November 2005 case file VI SA/Wa 845/05 overturned the decision and held it unenforceable. The VAC ruled that the most visible element in all trade marks in this case is the word Valentino, and verbal elements have the dominant position. The Court also noted that reputation of a trade mark is not dependent on the borders of individual countries or regions. The PPO should examine the evidence submitted by Valentino and it should assess the impact of the existence of a foreign reputed trade mark for its operation in Poland because Valentino could be uninterested of its expansion into the Polish territory, and in the situation if it were interested it could be overtaken by unauthorized entry. The Court agreed also that there was an infringement of the company name.

Trade mark law, II GSK 298/07

March 19th, 2008, Tomasz Rychlicki

In 2000 the PHU Makroterm K. Wąchała & A. Wąchała applied for the registration of the figurative and word mark MAKROTERM in classes 6, 9, 11 and 42. The Makro Cash and Carry company, who applied for the registration of the figurative and word mark MAKRO in classes 1–45 on 22 March 2000, opposed to the registration. Upon finding the observations groundless, the case was then decided by the Polish Patent Office (PPO).

Makro Cash and Carry claimed that the disputable mark imitated the MAKRO mark, used its renown and infringed the company’s right to a company name. Makroterm in turn said there was no likelihood of confusion since the disputed mark did not use the renown of the MAKRO mark because of the fact that Macro Cash and Carry failed to prove the MAKRO mark had been renowned. The Makroterm representative also said the MAKRO mark had not been universally known.

The PPO overruled MAKRO’s opposition. It decided that in assessing similarity one should not focus solely on one element – the “makro” word. It also said the MAKROTERM mark was one word combining the “makro” and “term” words into an original name that moreover had been put in a colourful design. According to the Office both marks brought about different associations in the minds of the relevant public. It decided that the marks themselves differed and did not examine similarity in goods offered by the companies. The Office also pointed out that the provided advertising materials concerned only the MAKRO CASH AND CARRY mark. With regard to the infringement of the right to a company name it decided the name was a compound one so there could not have been any infringement.

Makro Cash and Carry filed an appeal against the decision of the Polish Patent Office. It read that the Office had not assessed the similarity of goods offered by both companies and with identical goods the criteria for assessing similarity of marks are much stricter. Makro Cash and Carry also said the Polish Patent Office assessed only the differences but it should have assessed similarities.

Makroterm in turn underscored that the universal recognition of the MAKRO sign had not been adequately demonstrated and that the mark had been recognized by a half of the relevant public. It also questioned the research commissioned in 2006 by the MAKRO company.

The Voivodeship Administrative Court (VAC) in Warsaw, in a judgment of 22 March 2007, case file VI SA/Wa 1325/06, rejected the appeal. The Court held that the PPO had already compared the marks with regard to all three planes and decided that the marks bore fundamental differences. It decided that the “makro” word was a common one and had little distinctive value. Apart from that it found the “term” word much more distinctive, which together with colourful design of the MAKROTERM mark made both marks different.

MAKRO filed a cassation appeal to the Supreme Administrative Court (SAC). The Supreme Court in the judgment of 15 January 2008, case file II GSK 298/07 fully agreed with the earlier judgement of the Voivodeship Court and the decision of the Polish Patent Office. It also decided there was no similarity between the marks that would lead to a confusion neither on the phonetic, nor conceptual, nor figurative plane. The mark also had not infringed the appellant’s right to the name of his company.

Trade mark law, case II GSK 269/06

October 6th, 2007, Tomasz Rychlicki

By decision of 11 August 2005, the Patent Office refused to grant a right of protection for word-figurative “R-Profit” Z-234207 trade mark applied for by Raiffeisen Bank Polska S.A. for goods in Class 36 such as banking services for small and medium enterprises. The Patent Office concluded after examination proceedings that this sign may not be registered because it is similar to PROFIT R-87400 trade mark, registered for Bank Polska Kasa Opieki SA, with priority of 3 November 1993 for goods in Class 36 such as management of interest bearing money investments in zlotys. The PPO also stated that, in this case, the issue of services could not be challenged, since both signs are designed for the same services to a wide audience, i.e. banking services. The PPO ruled that both signs cannot exist simultaneously in trade without the risk of consumers confusions. In the opinion of the PPO there was no doubt that the trade marks are also similar phonetically and semantically.

Z-234207

The Voivodeship Administrative Court in Warsaw in its judgment of 11 May 2006 case file VI SA/Wa 542/06 dismissed the complaint filed by Raiffeisen Bank Polska S.A. and noted at the beggining that Article 315(1)(3) of the IPL, expresses the principle that the issue of the registrability of signs that were registered or applied for registration before 22 August 2001, is assessed on the basis of existing regulations. therefore the provisions of the Act of 31 January 1985 on trade marks are the basis for assessing the registrability of R-Profit trade mark, because it was applied for registration on 10 April 2001.

Article 315
1. Rights conferred in respect of inventions, utility models, ornamental designs, topographies of integrated circuits, trademarks and rationalisation projects, existing at the time of entry into force of this Law, shall remain effective. To these rights the previous provisions are applicable, unless the provisions of this Part stipulate otherwise.

2. Legal relationships established prior to the entry into force of this Law shall continue to be governed by the previous provisions.

3. Statutory requirements for the grant of a patent, a right of protection or a right in registration shall be assessed under the provisions effective at a date of filing of an application concerning an invention, a utility model, a trademark or topography of an integrated circuit with the Patent Office. However, the provision of Article 37(2) shall apply to patent and utility model applications pending at the date of entry into force of this Law.

In the opinion of the VAC that this case involved the same type of services. The Court agreed with the analysis of the list of services performed by the PPO that there exists homogenity of services between in both lists of goods. In the opinion of the Court, the PPO has properly analyzed the similarity of “R-Profit” and opposing “Profit” signs. Both signs should be compared in aural conceptual and phonetic aspects, bearing in mind that “R-Profit” is a word-figurative trade mark. According to the VAC, even though this case concenrs word and word-figurative trade marks, one may say that there exists graphic similarity, as “R-Profit” and “Profit” differ only by the letter “R” and the core of the two characters – “Profit” is identical. The VAC ruled that the argument that services in question have different distribution channels does not preclude the likelihood of confusion, because an average consumer may think that the service is derived from an entity that combines the organizational relationship and legal rights with the owner of “Profit” trade mark.

Raiffeisen Bank Polska S.A. filed a cassation complaint. The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 269/06 dissmised the case. The SAC held that the comparison of signs should be based on the general, overall impression, which compared trade marks have on the recipient, and thus if the dominant element in both signs are their common elements, there is a similarity between trade marks that is posing a risk of consumers confusion.