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Archive for: Art. 134 §1 PBAC

Trade mark law, case VI SA/Wa 1319/11

November 28th, 2011, Tomasz Rychlicki

Designer drugs are well-known as “dopalacze” in Poland (in English: boosters). They were freely available on the Polish market because of the legal loophole in the Polish Act of 29 July 2005 on Counteracting Drug Addiction. In 2010, after different mainstream media reported on several cases involving health problems caused by such drugs, the Polish Government ordered a nationwide crackdown on shops selling designer drugs, memory enhancers or noothropic substances.

In 2008, the Polish company KONFEKCJONER Sp. z o.o., one of the biggest suppliers of these products, tried to register the word trade mark DOPALACZE.com Z-345673 in Classes 30, 33, 34 and 39, but the Polish Patent Office refused to grant the right of protection. KONFEKCJONER filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 4 October 2011 case file VI SA/Wa 1319/11 dismissed it, and held that the word trade mark DOPALACZE.COM was intended to designate, inter alia, herbal substitutes for coffee, alcoholic beverages, tobacco and smokers’ articles, and delivery of goods and parcels. The recipients of these goods and services are generally understood as the broadest public possible, and the “average consumer” is reasonably well informed and reasonably observant and circumspect. The Court ruled that the sign in question may suggest that the consumption of goods bearing this trade mark may cause specific narcotic effect. There was a sufficiently serious risk that consumers receive wrong message regarding the goods. Although, products such as coffee, cigarettes, tobacco, function as goods that add energy, they are treated as stimulants or tranquilizers, however, such a trade mark may suggest that the goods have been strengthened to induce a certain narcotic effect. Smokers’ articles are deemed as ancillary to the aforementioned goods for which the registration was sought, the same applies to delivery of parcels and goods.

Trade mark law, case II GSK 332/08

October 14th, 2008, Tomasz Rychlicki

On December 1999, Polish company Top Choice Agata Murawska has applied for trade mark registration for word mark WINNER and word-figurative sign W WINNER in Class 21 for goods such as combs, hair brushes and other products and in Class 29 for rollers. In 2003, The Polish Patent Office granted the right of protection respectively R-148543 and R-148540.

R-148540

The Company Inter Vion SA from Warszawa decided to invalidate aforementioned registrations claiming that those trade marks are the company name (the firm) of Tong-Fong Brush Factory Co. Ltd., from Taiwan which is one of the biggest producers of brushes, combs and mirrors (60 milions of pieces produced in 2000). The WINNER sign, although not registered, was used by Taiwanese company since 1997 on the Polish market. The Company from Taiwan presented an offer involving a series WINNER products to several of Polish companies, including Inter Vion and Top Choice. Since 1998 Top Choise has imported the above-mentioned accessories bearing WINNER trade mark, first by intermediaries, and since 2000 directly from the Taiwanese company. InterVion has signed its first importation contract for WINNER products in 1999. The company has presented first images of these goods in its directory of 1999/2000. During invalidation proceedings before the Polish Patent Office InterVion has alleged that Top Choice, by registering the disputed marks, tried to gain a monopoly on the importation of products.

The PPO invalidated WINNER and W WINNER trade marks in its decision of 4 October 2006, act signatures Sp. 119/05 and Sp. 46/06. The Voivodeship Administrative Court in Warsaw has dismissed Top Choice’s appeal complaints in its judgments of 27 August 2007, case files VI SA/Wa 114/07 and VI SA/Wa 115/07. Top Choice filed a cassation complaint before the Supreme Administrative Court claiming that VAC erred in its findings and violated the administrative procedure rules.

The Supreme Administrative Court in its judgment of 8 October 2008 case file II GSK 332/08 dismissed the cassation and based its arguments on procedural errors included in Top Choice’s complaint which in Court’s opinion lacked proper claims’ construction. However, SAC also held that company who registered other company’s name as a trade mark acted in bad faith which was a sufficient circumstance to declare invalidation of such trade mark by the PPO.

Trade mark law, case file II GSK 138/07

September 10th, 2008, Tomasz Rychlicki

On 19 March 1998, with the notification of 17 September 1996, the Austrian company Red Bull GmbH has received the right of protection for its word trade mark based on the international registration IR-641378 A, in almost all classes (3, 5, 12, 14, 16, 18, 20, 25, 26, 28, 29, 30, 32, 33, 34, 35, 39,41 and 42). On March 2004, the Polish company Przedsiebiorstwo Produkcji Lodów “KORAL” applied for the registration of the word trade mark RED BLUE Z-277694 in Class 30 for goods such as ice creams and other products. However, the Polish Patent Office recognized earlier priority of Red Bull’s trade mark and rejected the application.

Koral requested a motion to declare the expiration of Red Bull’s trade mark rights in Class 30, claiming that the Austrian company failed to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years. The PPO agreed with “Koral” and declared the expiration of Red Bull’s trade mark in its decision of 30 October 2005 case file Sp. 199/04. Red Bull’s evidences of use that were based on the fact that Austrian company has put its trade mark on boxes with sweets which were later sent during different occasions to customers and business partners were found insufficient. The date on which five years period ended was set by the PPO on 9 July 2004 (the date on which the request for invalidation was filed). Both parties filed a complaint against this decision. The Polish company did not agree with PPO’s findings as regards trade mark rights’ expiration date, and the Austrian company claimed that PPO should consider reputation of its trade mark.

The Voivodeship Administrative Court in Warsaw in its judgment of 7 September 2006 case file VI SA/Wa 557/06 held that reputation is not taken into account during proceedings for lapse of a right of protection. Arguments that Koral company has no standing were rejected by the Court because both parties were also involved in unfair competition proceeding before civil court. Once again, both companies filed a cassation complaint.

The Supreme Administrative Court in its judgment of 11 September 2008 case file II GSK 138/07 ruled that the reputation of a trade mark is irrelevant when there are the invalidation proceedings. This is not the proper stage. The reputation could be taken into account during the application proceeding for Koral company’s trade marks. A single fact of non-used Red Bull’s trade mark being an obstacle for registration was a sufficient condition for declaring its expiry. Koral has also called into question the date of expiry of the right of protection. It was the reason for the Court to discuss this issue in the extended chamber. The Supreme Administrative Court in its opinion of 23 April 2008 case file II GPS 1/08 gave a very detailed explanation of that problem. See also “Trade mark law, case II GPS 1/08“.