Archive for: Polish Act on Industrial Property Law

Trade mark law, case I ACz 1156/12

December 31st, 2012, Tomasz Rychlicki

The Polish entrepreneur Przedszkola Pomarańczowa Ciuchcia A. Sławek sp. jawna from Warszawa, the owner of the word-figurative trade mark pomarańczowa ciuchcia przedszkola R-247390 (orange choo-choo kindergartens), sued another entrepreneur seated in Mińsk Mazowiecki who runs kindergarten as its business activity under the name “Wesoła ciuchacia” (Jolly choo-choo).

R-247390

The District Court in Siedlce did not grant a preliminary injunction. The Court ruled that the plaintiff owns trade marks that only include the word “ciuchcia”, and the ban would block the use of such word for any other business, which would hamper the proper functioning of the market and could lead to the monopolization of this word by one company.

The Appeallate Court in Lublin in its judgment case file I ACz 1156/12 dismissed the complaint filed by A. Sławek. The Court held that the company cannot extend the right of protection for the word mark “orange choo-choo” on the mere word “choo-choo” in order to prevent others to use it in their company names. The right of protection include a sufficiently distinguishable words “orange choo-choo” and the word “choo-choo” itself, according to the Court, is not distinctive. Although these rights are in force throughout the whole territory of the Republic of Poland, but the risk of misleading recipients of kindergarten services is limited because both entrepreneurs are operating in very different areas – Warsaw and Mińsk Mazowiecki. The risk of confusion between the name “orange choo-choo” and “jolly choo-choo” is also minimized by establishing the entity that is responsible for running kindergartens, the scope of education and educational services, human resources services and the method of financing.

Trade mark law, case Sp. 566/09

December 6th, 2012, Tomasz Rychlicki

On 11 January 2008, the Polish Patent Office granted the right of protection for the word-figurative trade mark SEYDAK R-199882 for goods in Class 4 such as fuel, lubricants, engine and gear oils and hydraulic oils, and services in Class 39 such as parking services, and in Class 43 such as hotel services: motels and restaurants. This sign was applied for by the Polish entrepreneur Przedsiębiorstwo Usługowo Handlowe Marian Seydak.

R-115854

BP p.l.c. filed a request for the invalidation of the SEYDAK trade mark. The British company argued that the questioned sign uses a composition of colors (green and yellow) that are presented in the reputed trade marks owned by BP. The Company referred to the judgment of the Court of Justice of the EU of 3 September 2009 case C-498/07 and the judgment of the Supreme Administrative Court of 20 February 2007 case file II GSK 247/06, judgment of the Supreme Administrative Court of 12 October 2010 case file II GSK 849/09, and the judgment of the Supreme Court of 23 October 2008 case file V CK 109/08. See “Trade mark law, case II GSK 247/06“, “Trade mark law, case II GSK 849/09” and “Trade mark law, case V CSK 109/08“. BP claimed that it is not possible to assume that in the case of word-figurative trade mark, the verbal elements always dominate. The above cited judgments have changed this principle, and provided that sometimes colors or images are the dominant elements that may raise associations between compared trade marks. A patent attorney who was representing Marian Seydak, pointed to the discrepancy of the case-law, and stressed that the mere similarity of background is not significant enough when compared to the visual aspect of both signs. Marian Seydak argued that the trade mark at issue is different in terms of visual aspect, colors, and the layout of letters. He also provided that he is a local entrepreneur, who has just five gas stations distant from the main routes.

R-199882

The Adjudicative Board of the PPO in its decision of 12 November 2012 case no. Sp. 566/09 dismissed the request. The decision is not final yet. The complaint may be filed before the Voivodeship Administrative Court in Warsaw.

Trade mark law, case VI SA/Wa 122/12

November 27th, 2012, Tomasz Rychlicki

On 2004, JOOP! GmbH requested the Polish Patent Office to invalidate the right of protection for the word trade mark JUUPI ! R-103654 registered for goods in Class 3 and owned by “AQUAREL” Kosiorek Spółka Jawna. The German company argued that JUUPI ! is similar to its trade marks JOOP! R-64463 and JOOP! IR-73926 that were registered with the earlier priority. The PPO in its decision of 7 February 2006 no Sp. 323/04 dismissed the request. Joop! filed a complaint against this decision, but the Voivodeship Administrative Court in its judgment of 13 October 2006 case file VI SA/Wa 1339/06 dismissed it. Joop! decided to file a cassation complaint. The Supreme Administrative Court in its judgment of 5 July 2007 case file II GSK 98/07 overturned the judgment of the VAC and sent it back for further reconsideration. The SAC held that the PPO and the VAC misinterpreted the provisions of the Polish Industrial Property Law with regard to the knowledge and awareness of the requesting party on the use of the later trade mark for a period of five successive years. The Voivodeship Administrative Court in Warsaw in its judgment of 12 October 2007 case file VI SA/Wa 1403/07 re-examined the case in accordance with what has been determined by the Supreme Administrative Court. The case went back to the PPO. Meanwhile, JOOP! GmbH transferred the rights to JOOP! R-64463 and JOOP! IR-73926 to COTY B.V. COTY appointed its representative (advocate), who submitted to the case file properly paid power of attorney that authorized him to act in this particular case, together with a copy of the relevant register of companies, however it was not recorded in the minutes and documents offered have not been adopted in the case file, which also has not been recorded in the minutes of the hearing, because the Polish Patent Office did not consider these requests and documents as coming from the party of the proceedings. The PPO dismissed the request, and decided that opposed trade marks are not similar, and the reputation of JOOP! R-64463 has not been proven. COTY filed a complaint against this decision.

The Voivodeship Admiistrative Court in Warsaw in its judgment of 2 August 2012 case file VI SA/Wa 122/12 dismissed it and ruled that the existence of legitimacy to file a complaint is subject to examination by the administrative court. This is the basic step, the result of which depends on the further course of the proceedings. The finding by the court that the complaint to the administrative court was brought by a party without legitimacy to file such a complaint, resulting in dismissal of the complaint without examining the merits of the contested decision. The Court held that the transfer (assignment) of trade mark rights in the course of proceedings before the Court for invalidation of the right of protection for a trade mark, i.e. rights to a trade mark that was used as an opposing sign, does not create the right for the new owner to seek legal interest (locus standi) in this proceedings as a party to the proceedings.

Trade mark law, case VI SA/Wa 959/12

November 20th, 2012, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark Quatro Pak quality packaging Z-370075 applied for the goods in Class 16 such as paper, printed matter, instructional and teaching material (except apparatus) by the Polish company Sokpol sp. z o.o. The PPO decided that the applied sign is similar to the CTM QUATRO no. 005799325 and International registration QUATRO IR-0923559, both registered for the same goods in Class 16. Sokpol filed a complaint against such decision. The Company argued that the main element of its word-figurative sign are two words – QUATRO PAK, and not the word QUATRO itself.

Z-370075

The Voivodeship Administrative Court in its judgment of 3 October 2012 case file VI SA/Wa 959/12 dismissed it. The Court held that the assessment of the dominant meaning to the word elements in the word-figurative trade mark word is grounded in the belief that words are the most easily seen and remembered elements and thus are the most effective channels of communication with the customer. This assumption cannot be questioned only in relation to the words that carry a clear and understandable information to the average consumer, so to the words quite well-known and understood in the Polish language. There should be no doubt that the word QUATRO cannot be attributed to any clear and understandable information in Polish. Thus, it will be perceived by the average consumer as an abstract expression in relation to the goods bearing trade marks at issue.

Trade mark law, case VI SA/Wa 1716/11

November 15th, 2012, Tomasz Rychlicki

On 4 January 2011, the Polish Patent Office invalidated the right of protection for the word-figurative trade mark PIEKARNIA CUKIERNIA Jacek Gaj R-175774. The request for invalidation was filed by the Polish company who owned similar earlier trade mark registration. The PPO cited findings included in the judgment of the Court of Justice of 6 October 2005 case C-120/04 and in the judgment of the Supreme Administrative court of 26 October 2006 case file II GSK 37/06, and agreed with the Courts that by adding to the complex trade mark of the word element, indicating the company from which the goods originate, such method does not remove the risk of misleading the public, since the perception of the mark as a whole may lead to the impression that the goods or services of compared signs come from companies that are economically linked. Jacek Gaj filed a complaint against this decision.

R-175774

The Voivodeship Administrative Court in its judgment of 20 February 2012 case file VI SA/Wa 1716/11 dismissed it. The Court ruled that general perception of trade marks by a potential customer – the consumer, is crucial for assessing the similarity. Verbal elements are generally dominant in the complex signs, but not when they are purely informative, descriptive, including word elements with the name of the other business.

Trade mark law, case Sp. 484/10

November 9th, 2012, Tomasz Rychlicki

Nike International Ltd., filed a notice of opposition to the decision of the Polish Patent Office on the grant of the right of protection for the figurative trade mark R-215109 that was registered for Sinda Poland Corporation sp. z o. o. for goods in Class 25 such as shoes. Nike claimed similarity of its signs and the unfair use of reputation.

R-215109

The Adjudicative Board of the Polish Patent Office in its decision of 26 October 2012 case no. Sp. 484/10 dismissed the opposition. The PPO did not find similarity between the opposed trade marks, and ruled that the disputed signs brings to mind an arrowhead. The decision is not final yet.

Trade mark law, case VI SA/Wa 769/12

November 5th, 2012, Tomasz Rychlicki

Red Bull GmbH requested the Polish Patent Office to decide on the lapse of the word-figurative trade mark TAURUS IR-604762 owned by Gablitzer Getrankeindustrie und Kaffeehandelsgesellschaft M.B.H. from Austria, and effectively registered on the Polish territory since 27 July 1993. Red Bull claimed that Gablitzer Getrankeindustrie und Kaffeehandelsgesellschaft was deleted from the registry of entrepreneurs in June 2001, and attached, as evidence, an excerpt from the register, which showed that the trade mark proprietor after the bankruptcy has been removed from the register of companies. Red Bull provided also a certified translation of the document.

IR-604762

The Adjudicative Board of the Polish Patent Office in its decision of 14 December 2011 case no. Sp. 286/10 ruled on the lapse of the right of protection as on 13 September 2007. Red Bull requested the PPO to correct an obvious mistake in the date of the lapse. The Company noted that the PPO made that mistake, because there was an error in translation into Polish of the extract from the Austrian register. Red Bull attached corrected translation from the German language, explaining the reasons for the correction. The PPO in its order of January 2012 ruled that the mistake was no committed by PPO, but by the translator. Thus, it was not subject to correction. Red Bull filed complaint against the decision.

The Voivodeship Administrative Court in its judgment of 5 September 2012 case file VI SA/Wa 769/12 annulled the contested decision, and ruled it unenforceable. The VAC noted that the public authority is obliged to carry on the proceedings in the Polish language, both in oral actions and in order to keep the documentation of the procedure in Polish, and it’s a legal obligation to use in administrative proceedings translated documents. However, the Court held that the public authority, acting on the request of a party, cannot decline to investigate the content of the document along with its translation, as the results of this examination should be unambiguous, and failure to do so, constitutes a breach of the rules of administrative proceedings that may have a significant impact on the outcome of the case. The case-law of administrative courts generally accepted the rule that – regardless of the requirements of Article 5 of the Act on the Polish language – the evidence is the content of the document created in foreign language, not its translation. Translation does not a substitute a document written in a foreign language, but serves only to determine what is the content of that document.

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 no. Sp. 30/11

October 23rd, 2012, Tomasz Rychlicki

On 27 February 2009, the Polish Patent Office granted the right of protection for the word trade mark PARADA R-215899 applied for the goods in Class 18 such as leather and imitations of leather, and goods made of these materials and goods in Class 25 such as clothing made of natural and synthetic materials, leather garments, footwear, headgear, by the Polish company HenMar sp. z o. o. from Dębica.

IR-650695

PRADA S.A. from Luxembourg filed a notice of opposition. The company argued that the trade mark PARADA is confusingly similar to its word-figurative trade mark PRADA IR-650695 registered in Poland with the earlier priority of 1995, for goods in Class 18 and Class 25.

The Adjudicative Board of the Polish Patent Office in its decision of 12 October 2012 case no. Sp. 30/11 ruled that PARADA and PRADA are not similar. In the opinion of the PPO, although compared signs are composed of similar letters, however, the deciding factor was the conceptual aspect of both trade marks. In Polish, the word “parada” has a specific meaning and means, among others, spectacular show with the participation of many people (parade). The PPO decided that the semantic aspect proves that both signs will be perceived differently and there is no risk of misleading the public as to the origin of goods. Further allegations, based on the reputation of PRADA trade mark, have become, therefore, irrelevant. The decision is not final yet. The complaint may be filed before the Voivodeship Administrative Court in Warsaw.

Trade mark law, case II GSK 2324/11

October 5th, 2012, Tomasz Rychlicki

Julius Sämann Ltd., the owner of the figurative trade mark WUNDERBAUM IR-0579396, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark Forest Fresh R-183901 owned by S&S Smiczek & Smiczek Hanna Smiczek. Both trade marks were registered for similar goods in Class 5, mainly air freshening products. Julius Sämann Ltd. claimed that because of the similarity of goods there is a risk of misleading the public, in particular by evoking associations with the earlier mark. The company provided also evidence on reputation of its trade mark.

iR-0579396

The Polish Patent Office invalidated the right of protection. The PPO decided that three required conditions had to be cumulatively met in this case: i) the reputation of the earlier mark, ii) the similarity or identity of signs, iii) if it without due cause would bring unfair advantage to the owner of the later trade mark or be detrimental to the distinctive character or the repute of the earlier trademark. The PPO noted that the case law distinguishes between absolute and relative methods of assessing reputation. The first one considers knowledge of the mark and takes into account primarily the percentage of a certain degree of its recognition on the market. The relative method emphasizes different criteria, including the degree of the recognition of the trade mark, the market share in terms of quantity and value of goods sold, the extent and duration of product advertisements marked by the sign, territorial and temporal scope of its use, licenses granted, quality of the goods, the value of the sign in the evaluation of independent financial institutions, the size of expenditures incurred in connection with the promotion of trade, as well as relationship price of substitute goods. The evidence material can be public opinion polls, prizes and awards, press releases, ratings, reports, invoices and other commercial documents, as well as various promotional materials. The Polish Patent Office has adopted a mixed methodology in this case, and ruled that both the evidence on reputation, that was claimed and established before the date of application of the contested trade mark, as well as documents from the later period, strengthen the recognition of reputation of the trade mark WUNDERBAUM IR-0579396. The PPO decided that both trade marks are similar in visual, aural and conceptual aspects. The PPO noted that the market presence and existence of a trade mark which consumers associate with reputation of another sign, harm the interest of the owner. S&S Smiczek & Smiczek Hanna Smiczek filed a complaint against this decision.

R-183901

The Voivodeship Administrative Court in Warsaw in its judgment of 2 June 2011 case file VI SA/Wa 334/11 dismissed it. The Court agreed with the the assessment of the PPO, and repeated that an entrepreneur, who for the goods of the same type, chooses a sign that is similar to a trade mark with earlier priority, given that there is an infinite number of signs to be selected, acts at its own risk. S&S Smiczek & Smiczek Hanna Smiczek brought a cassation comaplaint.

The Supreme Administrative Court in its judgment of 10 July 2012 case file II GSK 2324/11 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that the important drawback of the contested judgment and the decision of the PPO was the assumption on the similarity of the opposed trade marks that was based on the mere fact of the use in their visual aspect, a form of tree, without trying to examine whether the different presentation, including the type and shape of the tree, used in these signs, allowed for the adoption of the view that there exists the similarity of the signs. As a result, the Polish Patent Office, followed by the VAC, accepted the monopoly (exclusiveness) of the company to use very idea of ​​the tree element in its trade mark. The SAC recommended that the VAC should also take a stand on the consequences of the fact that S&S Smiczek & Smiczek Hanna Smiczek used its trade mark for a considerable period of time from 2002. After almost 5 years, Julius Sämann Ltd. initiated a civil action against the S&A. The civil proceedings with regard to trade mark infringement ended before the Supreme Court in its judgment of 14 October 2009 case file V CSK 102/09. The Supreme Court dismissing a cassation appeal filed by Julius Sämann Ltd., based on the argument that long-standing and undisturbed use of the sign in question, in connection with the principle venire contra factum proprium, according to which, if the party continued at a specific practice, it can not rely on its illegality, if other entity accepted such practice in good faith and it could suffer injury as a result of the changes. The application of this rule would come into play especially in a situation, if after the reexamination of evidence, the similarity of opposed signs has been established, and there was not any proof of bad faith on S&S side. The argument that there was bad faith requires evidence and proof, because good faith is presumed. Whether, in connection with long-term use, the S&S trade mark has acquired distinctiveness under average conditions of the market, a feature which is required for any sign to be registered, could speak in favor of the principle of venire contra factum proprium. In addition, marking the goods produced by S&S with its own trade mark, which are the goods of the same kind as products of Julius Sämann Ltd., undoubtedly positively affected the overall demand for such goods on the marker. Therefore, the invalidation of S&S trade mark in situation of its use in good faith, could easily lead to the acquisition of the customers of S&S by Julius Sämann Ltd., without incurring the costs which were attended by S&S in the promotion of the sign, The Court found it difficult to accept. The SAC also held that it should be borne in mind that the right of protection for a trade mark, as every object in the closed list (numerus clasus) of property rights, is admittedly an absolute personal right effective against all (erga omnes), however, this right is not subject to absolute protection. In the light of the general principles for the exercise of property rights as defined in the Polish Civil Code, the boundaries of this right are defined in the Acts and the rules of social coexistence. The Polish Industrial Property Law also refers to these rules. For these reasons, the circumstances giving rise to the allegation of the infringement of the principle of venire contra factum proprium, are one of the limits to the exercise by the owner of its legitimate socio-economic use of the right of protection that derives from the registration of the trade mark. Thus, the invalidation proceedings started against the trade mark Forest Fresh R-183901, in violation of the above mentioned principle, may be considered as the abuse of the right of protection for a trade mark by the proprietor of such a right, that is not entitled to the protection.

Trade mark law, case II GSK 1156/11

September 25th, 2012, Tomasz Rychlicki

The European Commission filed a notice of opposition to the decision of the Polish Patent Office on the grant of the right of protection for the word-figurative trade mark euro SKLEP R-180808 that was applied for by the Polish company Euro Sklep S.A. from Bielsko Biała. The EC said that the trade mark contains an imitation of the European Union flag because it has five distinctive yellow stars (mullets) arranged in an arc (part of a circle) on a blue background – which obviously violates the official symbol of the European Union. Euro Sklep argued that the opposition is unfounded, because the argument that the trade mark is an imitation symbol is an obvious abuse of the law by the EC, since the examination of signs is to be assessed as a whole, and not by attributing the illusory similarities. The Polish Patent Office invalidated the right of protection. According to the PPO, the average consumer who sees the mark with prominent yellow sign EURO accompanied by five-pointed stars in a semi-circle, will associate it with the flag of the European Union. The PPO pointed out that the use of the EURO caption, as well as graphic elements in the form of a bird or incomplete number of stars, does not rule out the conceptual similarity, since use of the word euro as the dominant element of the mark may exacerbate the association of the recipient that he has to deal with an institution agenda of the European Union. Euro Sklep filed a complaint against this decision and noted that in this case the PPO was not dealing with registration of the flag of the European Communities/European Union as a trade mark, but at most, it would be its imitation from a heraldic point of view. However, the PPO did not properly explain this issue. The Company noted that the imitation prohibited under Article 6ter of the Paris Convention is narrower in scope than an imitation, which normally is considered to be unacceptable between the trade marks. According to Euro Sklep, this view is particularly justified because very often the National flags and emblems contain items commonly used, in particular those relating to flora and fauna, such as lions, bears, flowers, etc., which must remain in public domain for free use.

R-180808

The Voivodeship Administrative Court in its judgment of 7 September 2011 case file VI SA/Wa 1036/10 dismissed the complaint and ruled that the fact of using only half of the symbol did not matter from a heraldic point of view, because the PPO was still dealing with the emblem (flag) of the European Union. Euro Sklep S.A. filed a cassation complaint. The Company argued that the presence of the words on the flag is the negation of the principles of heraldry, and itself refutes allegation of heraldic imitation. Euro Sklep pointed out to couple of CTMs registered by the OHIM that share the same symbols of of yellow stars on blue background.

The Supreme Administrative Court in its judgment of 18 September 2012 case file II GSK 1156/11 dismissed the cassation and ruled that the provisions of Paris Convention and Polish Industrial Property Law were introduced to protect National emblems and symbols against dilution.

Trade mark law, case VI SA/Wa 1267/11

September 19th, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 3 October 2011 case file VI SA/Wa 1267/11 dismissed the complaint brought by the Polish law firm BSO PRAWO & PODATKI – Bramorski Szermach Okorowska Kancelaria Prawna Spółka komandytowa against the refusal decision of the Polish Patent Office to grant the right of protection for the word-figurative trade mark BSO legge & Tasse Z-344754.

Z-344754

The Court agreed with the PPO that the applied sign is almost identical with the word CTM BSO no. 001463017 and ruled that for the average recipient of legal services they are similar to intellectual property consultancy, patent, design and trademark agency, because the average consumer of legal services, who comes to the office lead by a legal advisor (radca prawny) or advocate, simply instructs his case in the belief that it returns to the competent professional. The Court could not deny the competence to lawyer who is dealing with the industrial property issues and cases, as this area of law is also subject to examination for people who would like to qualify to the legal profession. This judgment is final.

Trade mark law, case Sp. 202/12

September 11th, 2012, Tomasz Rychlicki

Apple, Inc. filed the request for invalidation of the right of protection for the word-figurative trade mark A.PL registered for goods and services in Class 9, 35 and 42 and owned by the Polish company Internet S.A. from Warszawa. The Polish company also provides an online grocery store under the domain name a.pl. The main arguments presented by the U.S. company were based on confusing similarity between the sign A.PL and national and Community trade marks that are owned by Apple. Arguments based on the unfair use of the reputation were also raised.

R-222253

The Adjudicative Board held the first hearing on 29 august 2012 case no. Sp. 202/12. However, due to the large volume of evidence supplied by Apple, the hearing was adjourned.

Trade mark law, case VI SA/Wa 557/11

September 10th, 2012, Tomasz Rychlicki

On 2 January 2007, the Polish Patent Office granted the right of protection for the word-figurative trade mark GLOBAL R-192958 for the Polish entrepreneur Marek Stefaniak from Gdańsk, for goods and services in Classes 9, 16, 35, 37, 38, 39, 41, 42 and 43. On 30 July 2008, the Swedish company Global Refund Holdings AB filed the request for invalidation for goods in Classes 9 and 16 and for services in Class 35. Global Refund argued that the sign in question is similar to its trade mark G GLOBAL REFUND IR-688582.

R-192958

The Polish Patent Office in its decision of 1 June 2010 case no. Sp. 148/09 found similarity of goods and services and decided that both trade marks share the same word element which may cause consumers’ confusion. Therefore, the PPO invalidated the right of protection. Marek Stefaniak filed a complaint against this decision.

IR-688582

The Voivodeship Administrative Court in its judgment of 17 August 2011 case file VI SA/Wa 557/11 ruled that according to the provisions of Article 255(4) of the IPL, the PPO decided and settles cases in litigation procedure within the scope of the request and should be bound by the legal ground invoked by the requesting party. Thus, the request for invalidation of the right of protection for a trade mark define the scope of the administrative case by defining its borders, both as to the facts and the legal basis for the request. This rule in this proceeding was even more important because it was contradictory procedure, and thus characterized by adversarial nature. A party that initiates the dispute also determines to what extent the statutory requirements were not met in order to obtain a trade mark registration and submits evidence in support of its position. The settlement of case within the scope of the request means that these limits can not be exceeded. In the opinion of the Court, going beyond the scope of the request for invalidation of the registration violates the interests of the holder of the registration. The judgment is final.

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 377/12

August 19th, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 12 July 2012 case file VI SA/Wa 377/12 held that adding to the complaint evidence which, according to the adversarial principle should be presented by a party in the administrative proceedings and have not been submitted to the PPO before a decision was issued, is deemed as delayed and cannot be taken into account when assessing the validity of a decision of the PPO. Transferring the burden of proof on the administrative court is inconsistent with the role of this court, which does not decide on administrative cases, but its rule is to control administrative decisions in terms of their compliance with the law.

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 VI SA/Wa 1806/11

August 3rd, 2012, Tomasz Rychlicki

The Polish entrepreneur IT5.PL Anna Sasin applied to the Polish Patent Office for the right of protection for the word trade mark PsychoDietetyka Z-325335 for services in classes 35, 38, 39, 41, 42, 43 and 44. The PPO refused and decided that the combination of two words (English: Psycho and Dietetics) lacks distinctiveness and is descriptive for the applied services. The PPO ruled that the etymology of these two words is well known and easy to verify in publicly available dictionaries, or search engines. Psychodietetyka is the name of a program dealing with the causes of eating disorders and diseases associated with poor nutrition (including diabetes, obesity, anorexia, bulimia), that also indicates psychological factors in eating disorders, such as lack of motivation to fight obesity and overweight, emotional sphere, impaired perception of self, relationships with family, problems with identity formation. The PPO noted that if someone type the phrase psychodietetyka, many search results of that word appear in the web browser. IT5.PL filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 15 February 2012 case file VI SA/Wa 1806/11 dismissed it and noted that the combination of words lies in their simple fusion into one word, without giving them any unusual form of graphic or semantic, so that they could be deemed as distinctive for the marked goods. It did not matter that the applied sign was not present in a dictionary, because it is not a measure of distinctiveness of signs. The Court noted also that the Polish and European case-law presents both liberal and rigorous views on examination of descriptiveness of trade marks. However, the principle of individual assessment of each sign is consistent in the legal doctrine and jurisprudence. This judgment is final.

Trade mark law, case VI SA/Wa 137/12

August 3rd, 2012, Tomasz Rychlicki

BP p.l.c filed before the Polish Patent Office a request for the invalidation of the figurative trade mark R-218916 registered for goods and services in Class 4, 31 and 39 and owned by Albert Korman. BP claimed similarity to its figurative CTM no. 1916550, word-figurative CTM BP no. 4100335 and figurative CTM no. 4236279, that were registered with the earlier priority for goods and services in the same classes. BP noted that it uses a combination of green and yellow colors, especially green and yellow figurative element of the trending-like sun rays on a circular or semicircular shape, for the identification of its services. The Company argued that the goods and services of the trade mark at issue are the same or similar. BP also relied on the judgment of the Polish Court for the Community Trade Marks and Community Designs case file XII GWzt 15/08 in which the court found that the BP’s trade mark is highly distinctive, which may result from both the lack of descriptive elements in the sign as well as with the reputation and goodwill, which the mark has among the buyers.

R-218916

The Voivodeship Administrative Court in Warsaw in its judgment 11 April 2012 case file VI SA/Wa 137/12 ruled that due to the fact that the Polish Patent Office correctly decided that there were no indications that the applied trade mark was identical or similar to a trademark for which a right of protection was already granted , therefore, it was pointless to assess the reputation of the previous sign. Since the PPO properly determined that the marks are not similar, any considerations about the use of another’s reputation were not justified. The Court repeated that dissimilar signs cannot produce associations, so there can be no conscious imitation and profiting from someone else’s reputation. The correct view is that the lack of similarity between the signs eliminates the need to examine the use of another’s reputation, as the “precondition” of accepting the argument that the use of reputation has happened, is to determine the similarity between the signs, and the second condition is to establish the applicant’s trade mark has the reputation. This judgment is not final yet.

Trade mark law, case II GSK 413/11

August 3rd, 2012, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 1124/10“. GRAAL S.A decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 9 May 2012 case file II GSK 413/11 dismissed it and ruled that both the views established in Polish case-law and legal doctrine emphasize the fact that not the differences between the signs, but the similarities are assessed, and ultimately, the strength of this similarity determines whether there is likelihood of confusion or association between the trade marks, at least, at the part of the public.

Trade mark law, case VI SA/Wa 2458/11

July 27th, 2012, Tomasz Rychlicki

On 6 September 2007, the Polish Patent Office granted the right of protection for the word trade mark PRESTIGE OLIMPIC R-197858 for goods in Class 19 such as non-metallic construction materials, timber liners, bonded and not bonded floorboards, flooring lumber, sawn wood, planed and machined wood, construction wood, laminate flooring. This sign was applied for by the Polish company Barlinek S.A. The International Olympic Committee filed a notice of opposition to the decision of the Patent Office. The IOC noted that the name INTERNATIONAL OLYMPIC COMITEE is used since 1894, and the questioned trade mark causes the violation of its property rights and personal interests, in particular the right to the company name. In addition, the IOC claimed that the sign PRESTIGE OLIMPIC is similar to the CTM THE OLYMPICS no. 002827632, registered with the earlier priority, which may cause a risk of consumers confusion. Barlinek S.A. did not agree with such arguments and argued that both trade marks are completely different. The Company pointed out that the goods in Class 19 that are marked with the sign THE OLYMPICS have not been introduced on the Polish market.

The Polish Patent Office in its decision of 6 December 2010 no. Sp. 345/09 dismissed the request. According to the PPO, the words “Olympic” and “Olympics” are similar, but without prejudice to the similarity of signs. The PPO ruled that in this case, the recipients of goods are specialists in the construction industry, who are buying all the supplies at special stores and warehouses or directly from the manufacturers. Therefore, they are deemed as people paying bigger attention, as professionals, to the goods that they purchase. Such professional customers are well-versed in quality, product names and parameters as they are interested and will pay a special attention to who is the manufacturer of the goods.The IOC filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 February 2012 case file VI SA/Wa 2458/11 dismissed it. The Court held that the PPO ruled correctly that multiple signs and trade marks are used as the determination of the Olympic Games. However, no evidence was submitted that the sign THE OLYMPICS is being used in relation to the Olympics. The owner of the CTM did not show the connection between the CTM and any other goods. The sign THE OLYMPICS cannot be deemed as reputed trade mark only because its translation to Polish means Olympic games or Olympics. It is necessary to demonstrate the link between the mark and the goods and/or services. Therefore, the Court decided that the reputation has not been proven. Both signs are written in standard fonts, without any particular distinguishing features, so the same way they are written does not cause that any of the elements of these characters is predominant. The PPO correctly concluded that, despite the similarity of words in the second position in both characters, it cannot be said that the trade marks are confusingly similar. The judgment is not final. The IOC filed a cassation complaint.

Trade mark law, case VI SA/Wa 301/12

July 23rd, 2012, Tomasz Rychlicki

On 21 December 2007, the Polish Patent Office granted the right of protection for the word trade mark TEFAPAK R-199130 for goods in Class 1 such as graphite for industrial purposes, in class 6 for base metal alloys, and in Class 17 for sealants.

E.I. du Pont de Nemours & Company filed a notice of oppostion, arguing that TEFAPAK is similar to its reputed trade mark TEFLON R-49573, that was registered with the earlier priority of 27 September 1968 for goods in Classes 1, 2, 17, 21 and 22.

The Adjudicative Board of the PPO in its decision 17 November 2010 case no. Sp. 388/09 dismissed the opposition. The PPO did not find any similarities between both trade marks. E.I. du Pont filed a complaint against this decsion.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 301/12 dismissed it. The Court confirmed that, since the signs are not similar the reputation of an opposing trade mark is irrelevant. This judgment is not final yet.

Trade mark law, case VI SA/Wa 1269/11

July 18th, 2012, Tomasz Rychlicki

On August 2008, the Polish law firm BSO PRAWO & PODATKI – Bramorski Szermach Okorowska Kancelaria Prawna Spółka komandytowa from Wrocław applied to the Polish Patent Office for the right of protection for the word-figurative trade mark BSO RECHT & STEUERN Z-344756, for legal services in Class 45. The PPO refused because of the similarity with the CTM BSO no. 001463017 registered with the earlier priority for services in class 41 such as education and providing of training relating to intellectual property, patent, trademark, design and legal matters and relating to research and development for others, and in Class 42 for services such as Intellectual property consultancy, patent, design and trademark agency, including legal consultancy, engineering services, research and development for third parties and computer programming and services in relation to computer hardware, all relating to intellectual property, patent, trademark, design and legal matters and relating to research and development for others. This CTM is owned by the Danish IP law firm BUDDE SCHOU A/S. The PPO stated that the phrase “Recht & Stenern” (English: tax and law) is devoid of any distinctive character, as an expression, which determines only the scope of activities. This expression is not noticeable in the sign, because it is written in very small letters at the bottom, so there is no significant impact on public perception. Undoubtedly for the PPO, the acronym BSO was predominant, and the fact that the applied trade mark consists of three words and the earlier sign only one – BSO, was not important in this situation for the assessment of similarity. The PPO concluded that the same assesment applies to the figurative element. BSO PRAWO & PODATKI filed a complaint against this decision.

Z-344756

The Voivodeship Administrative Court in its judgment of 3 October 2011 case file VI SA/Wa 1269/11 dismissed it. The Court ruled that a stylized symbol of section sign (paragraph) is generally accepted as an indication of the persons and entities providing legal services. Such a figurative element, no matter in what color or in any styling, recognizable as a double S symbol, is perceived to be connected with the law. It was difficult to accept that such an element, in a graphic that indicates the applicant’s company, would distinguish it from other law firms or companies providing legal services. The difference in the territorial operation of both companies was irrelevant for the PPO and the Court, because the CTM covers the entire territory of the European Union, and both companies are located there, in different Member States. This judgment is final.

Industrial design law, case VI SA/Wa 1744/11

July 13th, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 16 February 2012 case file VI SA/Wa 1744/11 ruled that the term “public order” and “morality”, as defined in the provisions of Article 106(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, are not unequivocal.

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

The Court ruled that it is assumed that the inadmissibility of the design that is contrary to “morality” is primarily aimed at preventing the circulation of designs that violate social moral order. From this point of view, a design (product incorporating the design) and its circulation on the market should be examined with regard to the collision with generally accepted moral principles. While “public order” is defined by the basic social and legal principles, in particular legal principles arising from the Constitution.

Rp-10113

This case concerned the industrial design “Zeszyt edukacyjny” (in English: educational exercise book) Rp-10113. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case VI SA/Wa 1780/11

June 19th, 2012, Tomasz Rychlicki

The Polish company NTT System S.A. applied for the right of protection for word trade mark NTTonLine Z-330715 for services in Class 35. The PPO noted that the entry in the list of services such as “management of the licensing of goods and services to third parties”, was placed in the trade mark application in Class 35. The PPO ruled that it is a very general term, referring to all goods and services. Meanwhile, according to International Classification of Goods and Services “licensing of industrial property” and “licensing of computer programs” should be classified in class 45. Therefore, PPO asked for clarification of the original term – so as to eliminate any doubt regarding the scope of protection of the trade mark NTTonLine, because the general reference to all goods and services could in fact raise the risk of inclusion of general terms that belong to the different classes. NTT System did not submit any additional documents or corrections and the PPO discontinued the examination proceedings. NTT filed a complaint against this decision, and later withdraw it.

The Voivodeship Administratice Court in its order of 8 December 2010 case file VI SA/Wa 2122/10 was required to examine whether such withdrawal is not intended to evade the law or if it would leave in force a void decision. The Court ruled that that withdrawal was acceptable in this case. NTT filed a cassation complaint, and the Supreme Administrative Court in its order of 9 August 2011 case file II GSK 1127/11 annulled the order of the VAC and returned the case for further reconsideration.

The Voivodeship Administrative Court in its judgment of 5 April 2012 case file VI SA/Wa 1780/11 found that this time NTT System did not request the withdrawal of the complaint, and demanded a hearing. The Company argued that it is not true that the services listed in Class 35 are general in nature, and they need to be clarified, because for all general terms in the Nice Classification are marked with an asterisk, and only such terms should be clarified. Moreover, the contested final decision of the Polish Patent Office violated the law as it was issued by an unauthorized person – an expert not having the appropriate authority to consider this particular case. Such authorization should be granted by the President of the PPO. The Court held that the most important is the recommendation that the particular text appearing in the alphabetical list should be used as the indication of goods or services, not a general term. And the mere fact that a specific good or service are listed in alphabetical order does not affect the individual decision of national industrial property offices on the possibility of registration of the mark for such goods or services. The wording of the list of goods and services must be clear not only for the applicant, but also for third parties who either may submit an opposition to the grant of the right of protection, or simply by applying or using the sign, they wish to avoid a collision with a similar trade mark with an earlier priority. The court considered the request of the PPO that was addressed to the applicant in order to clarify the list of services, as justified. The Court ruled that the President of the Polish Patent Office is empowered to authorize certain persons not only to make decisions on her behalf in certain matters, but also to select of experts or assessors to act in certain cases. The expert examining the case was properly authorized by the President of the PPO. Taking into account all the arguments, the Court dismissed the complaint.

Trade mark law, case II GSK 666/10

June 4th, 2012, Tomasz Rychlicki

The Polish Patent Office granted the right of protection for the word trade mark Columbia R-182641 that was applied for by the Polish entrepreneur “ORION” Jerzy Czernek from Łódź. The German company Imperial Tobacco (EFKA) GmbH & Co. KG filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection, claiming similarity to its trade mark COLUMBUS IR-0613016 registered for some identical goods in Class 34. Mr Czernek argued that there is no likelihood of confusion between both trade marks, as the recipients of goods and services covered by those signs accurately identify the brand of cigarettes and they do not confuse them. The PPO agreed and dismissed the opposition. Imperial Tobacco filed complaint against this decision.

The Voivodeship Adminsitrative Court in its judgment of 25 January 2010 case file VI SA/Wa 1798/09 dismissed it. Imperial Tobacco filed a cassation complaint.

The Supreme Administrative Court in its judgment of 15 June 2011 case file II GSK 666/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that consumer’s attention focuses on the similarities and the first part of the sign. The SAC also noted that the VAC has not explained why it considered that eight-letter signs, that share the same 6 letters and the identical first two syllables, are completely different. In the case of identical goods, the analysis of similarity between trade marks should be particularly careful and thorough. The SAC noted that it should be always remembered that trade marks are to help customers to associate the product with the manufacturer, and not obscure the market and lead to confusion.

The Voivodeship Administrative Court in its judgment of 28 September 2011 case file VI SA/Wa 1541/11 reversed the contested decision, ruled it unenforceable, and returned the case to the PPO for reconsideration.

However, the Polish Patent Office in its decision of 4 April 2012 case no. Sp. 538/11 did not decide on the mertis of the case, becasue Mr Czernek waived his right of protection and Imperial Tobacco withdrew the opposition.

Trade mark law, case II GSK 665/10

June 3rd, 2012, Tomasz Rychlicki

On May 2006, the Polish Patent Office granted the right of protection for the word trade mark corovin R-173989 that was applied for by the Polish company CB S.A. The German company Coroplast Fritz Müller GmbH & Co.K.G. from Wuppertal filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection, claiming similarity to its trade mark Coroplast R-91907. The PPO dismissed the opposition and decided that in assessing the similarity of signs, the word trade marks COROPLAST and COROVIN are not similar in the semantic aspect because both are fanciful signs, they are neither similar in aural aspect because both assessed globally sound different due to the different endings, and they are not similar in the visual aspect due to different endings. Both companies operate in Poland in various sectors and the goods, at which the trade marks are placed, are not everyday use products. Furthermore, COROPLAST and COROVIN are also registered as trade marks in Germany and they co-exist seamlessly. Coroplast Fritz Müller filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 4 January 2010, case file VI SA/Wa 442/09 repealed the contested decision. The Court applied to its reasoning rules of the law of prägnanz (German: pithiness) while deciding this case. The Court ruled that by creating specific stimuli, one can manipulate the external context, and by influencing the human experience, one can manipulate the internal context. The law of proximity states that elements close to each other compared with other, more distant elements form the figure. The law of similarity based on the law of proximity in relation to similar elements, indicates that human perception can give rise to a new separate figures, and a new association. Next, the law of closure indicates that the perceptual system adds the missing elements and closes the form of incomplete figures, and in this case one can add to the already existing characters CORO other letters. It should be noted that the human being creates the perceived reality based on the interaction of knowledge that flows from the various branches and experience, with received stimuli. So it may be, in this case. Human knowledge derived from other branches of science may “complete” the lack in the designation and close this sign. CB S.A. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 22 June 2011 case file II GSK 665/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that when assessing the similarity of word trade marks, the first and initial part is essential, because it focuses recipients’ attention. However, the VAC ignored the fact that in a situation when the first element has a very weak distinctive character as a result of its use by many entrepreneurs in many different trade marks, the meaning of the second part of the trade mark is increasing and may well be that it’s this second part of the sign – the ending of the words – is distinctive and dominant.

Trade mark law, case VI SA/Wa 16/12

May 29th, 2012, Tomasz Rychlicki

POLMOS BIAŁYSTOK S.A. requested the Polish Patent Office to invalidate the figurative 3D trade mark WISENT VODKA PŁ 1764 DISTILLED & BOTTLED IN POLMOS LANCUT POLAND R-191793 owned by Fabryka Wódek POLMOS ŁAŃCUT S.A. POLMOS BIAŁYSTOK is the owner of the figurative trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081 and the 3D trade mark R-85811 depicting a bottle with a blade of grass inside, that were registered with the earlier priority. POLMOS BIAŁYSTOK argued that there exists the risk of misleading the public because of the similarity of trade marks. The similarity is based on the distinctive element – a blade of grass, that is the distinguishing element of Żubrówka bottle, which leads to the fact that consumers associate the brand with these trade marks. POLMOS BIAŁYSTOK provided evidence that Żubrówka is one of the most popular vodka brands on the Polish market, as well as studies on the presence of Żubrówka brand in the market, materials on advertising campaigns, a research on consumer choices in buying of vodkas. The Company also argued that “a blade in a bottle” was commonly associated with Polmos alcohol trade marks in 1999, when the trade mark portfolio was divided between different companies. POLMOS BIAŁYSTOK claimed the reputation of the trade marks R-46050, R-62081, R-80991, R-85811 and R-125 911, the same as the reputation of Żubrówka vodka trade marks that were acquired by the company.

R-191793

POLMOS ŁANCUT argued that the motifs of the wisent and a grass blade will not change the overall assessment of the compared trade marks, and as such, are associated with this type of vodka. In particular, the grass – Hierochloe odorata, which is necessary for the production of this kind of flavoured vodka. POLMOS ŁAŃCUT noted that the appropriation of these elements in favor of one company would not be justified, because it would limit the freedom of the activities of other competing entrepreneurs. POLMOS ŁAŃCUT provided examples of rights of protection for trade marks containing elements such as leaves and fruit of the rowan, drawings of a coconut or cherry, which are the signs used to mark of products in Class 33.

R-62081

The Polish Patent Office dismissed the request. The PPO agreed that mentioned trade marks are reputed, but they were not similar. The PPO also noted that in the case of trade marks for alcoholic beverages, the consumer’s attention is directed primarily at the label and its contents, as part of communicating the essential information about the brand, type and manufacturer of purchased product, and only then – on the other elements, such as the shape of the bottle or its contents. The PPO decided that POLMOS ŁAŃCUT did not derive any benefits from the reputation the earlier marks. POLMOS ŁAŃCUT carefully created its trade mark in order to fundamentally distinguish it from earlier signs owned by POLMOS BIAŁYSTOK. The only common associations that the compared signs raise come down to the fact that they serve to mark the same kind of vodka. CEDC INTERNATIONAL Sp. z o.o., the successor of POLMOS BIAŁYSTOK, filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 3 April 2012 case file VI SA/Wa 16/12 dismissed it. The Court held that the decision of the PPO did not violate the law in force or the methodology for comparison of trade marks. This judgment is not final yet.

Trade mark law, case Sp. 468/11

May 17th, 2012, Tomasz Rychlicki

On 26 October 2009, the Polish Patent Office registered the figurative trade mark R-221206 for goods in Classes 16, 35 and 44. This sign was applied for Fundacja na Rzecz Osób Niewidomych i Niepełnosprawnych “POMÓŻ I TY” z Gdyni (the Foundation for the Benefit of the Blind of Disabled People “YOU CAN HELP TOO”).

R-221206

European Union represented by the Commission filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection, claiming that the trade mark incorporated symbols of the EU flag. The Adjudicative Board of the PPO in its decision of 11 May 2012 case no. Sp. 468/11 dismissed the request anddecided that the questioned trade mark is quite distinct from the heraldic of the EU flag, with no resemblance to it.

This decision is not final yet. The EU may file a complaint to the Voivodeship Administrative Court. See also “Trade mark law, case Sp. 158/08” and “Trade mark law, case II GSK 555/09“.