Archive for: Art. 174 PBAC

Trade mark law, case II GSK 466/10

July 5th, 2011, Tomasz Rychlicki

Aquatherm GmbH registered a single green color determined by RAL 150 60 40 as a trade mark IR-863506 for goods in Class 19 such as rigid pipes of polypropylene for the supply of drinking water and heating and air conditioning systems in houses, office buildings and industrial buildings. The Company sought the recognition of the protection of its trade mark on the territory of the Republic of Poland based on the provisions of the Madrid Agreement Concerning the International Registration of Marks.


On 11 July 2006, the Polish Patent Office transmitted to the International Bureau in Geneva a notification of the grounds which prevent the protection of an international trademark to be recognised on the territory of the Republic of Poland. The PPO decided that according to Article 120 of the Polish Industrial Property Law this trade mark cannot distinguish the goods, because it is a single color and it is devoid of sufficient distinctive character.

On 20 April 2007, the Patent Office sent a letter to the International Bureau with information concerning the correction of a clerical error in the notification dated 11 July 2006, informing that the provisional refusal to recognize the protection should include Article 129(1)(ii) and Article 129(2)(i) of the IPL and not Article 120 of the IPL. At the same time, the PPO did not consider the request of the Aquatherm GmbH to initiate an administrative hearing on the correction of this error. The PPO pointed out that the correction did not change the legal basis of the notification. The difference in the numbering of Articles 120 and 129 was a result of unfortunate, in this case, close arrangement of numbers 9 and 0 on the computer keyboard.

The Polish Patent Office in its decision of 9 May 2008 case DT-IR-863 506 refused to recognize the protection. Aquatherm GmbH filed a request for re-examination of the matter, but it was dismissed by the PPO in its decision of 10 June 2009 case PT-430/08 IR-863 506. The PPO did not agree with the Aquatherm GmbH that the registration on its behalf of the earlier trade marks such as IR-832895 or IR-837655 justifies the registration of the applied sign because each case is decided according to individual circumstances. The PPO held that it has not changed, as a result of correcting errors, the legal basis of the refusal.

Aquatherm GmbH filed a complaint against these decisions. The Company argued that the PPO infringed on Article 5(2) of the Madrid Agreement because it took its decision after the expiration of one year term that is calculated from the date of the international registration of the mark. The provisions that were used as the basis for refusal, were first indicated in the letter of 20 April 2007. Aquatherm GmbH argued also that the PPO mistakenly determined that the goods included in the list of goods and services are everyday consumer goods targeted for mass audiences, and that the green color is commonly used for the determination of water supply pipes, and aqueous solutions. According to the Company, the PPO has not made an exhaustive evaluation of the evidence, in particular, it completely ignored the key evidence submitted by the company in a statement of the Polish Corporation of Sanitary, Heating, Gas and Air-Conditioning Technology which included information on whether a given color may indicate the manufacturer
on the market of installations polypropylene systems, and whether the green color used as designation of pipes or installations allows the buyers to identify these products with Aquatherm GmbH.

The Voivodeship Administrative Court in its judgment of 3 December 2009 case file VI SA/Wa 1452/09 dismissed the complaint. The VAC held that the provisional refusal cannot be considered ineffective. According to the Court, the PPO indicated the grounds for refusal which was in accordance with the Rule 17 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. The Court noted that in the case of color per se its concrete distinctive ability must be interpreted in the light of public interest, which is based on the rules of the limited reduction of the availability of colors for other entrepreneurs who offer goods or services of the same kind as the goods or services covered by the registration application. The basic function of the trade mark is to guarantee the final consumer or user the identity of the origin of the goods or designated services bearing the trade mark by letting them distinguish the goods or the service of goods or services of different origin. The distinctive character of the sign is based on such features which in the minds of consumers clearly indicate that a particular product bearing a given trade mark comes from the specific company. The VAC noted that in relation to the color per se, it is assumed that the existence of primary distinctive characteristic (without any prior use) is possible only in exceptional circumstances, especially when the number of goods or services for which the mark is applied for is very limited and when the relevant market is very specific. The Court noted that the green color in relation to the applied goods is not unusual. The VAC agreed with the PPO that, in the case of green color used for the pipes used for water flow, there is a risk that consumers will associate it with nature, therefore, it should not be monopolized by one company, in particular, that this shade of green RAL 150 60 40 is also not original.

Moreover, the VAC found that the Patent Office has rightly used the example of PN-70/N-01270 standards Guidelines for marking of pipelines. The standard recommends that the painting for the identification of pipelines made ​​of carbon steel or other materials susceptible to corrosion should be coordinated with anticorrosive painting in which the topcoat should also fulfill the function of identification. It is customary to use green for water and chemical solutions that pose no chemical and thermal threat. The Court noted that the statement of the Polish Corporation of Sanitary, Heating, Gas and Air-Conditioning Technology could be helpful to support Aquatherm position, but also found that such a document can not be regarded as expert evidence under the provisions of Polish Administrative Proceedings Code or substitute evidence for opinion polls.

The Supreme Administrative Court in its judgment of 15 April 2011 case file II GSK 466/10 dismissed the cassation. The SAC agreed with the findings included in the judgment of the VAC and ruled that the provisional refusal to recognize the protection is, by its very nature, some kind of a general statement issued by an authorized body of the state that is the party to the Madrid Agreement, and it includes the grounds which prevent the protection of an international trademark to be recognized on the territory of the Republic of Poland. The reasons given in the notification of provisional refusal set the boundaries within which the Polish Patent Office then investigates the case and its matter. However, as it was mentioned, the notification is of a general (signaling) nature and it is clarified in a subsequent administrative proceedings. In the event of a dispute, the position included in the notification is subject to detailed examination by the administrative courts, reflecting inter alia the context of a trade mark application, the nature of the applied sign, etc. As a consequence, the reasons of a provisional refusal should be explained in general terms and take into account all the circumstances specified in the notification by the authority.

Trade mark law, case II GSK 67/10

April 14th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for the word-figurative trade mark 1001 R-157046 registered for goods in Class 16 such as posters, albums, almanacs, stationery, blocks, drawing blocks, brochures, magazines, charade magazines, prints, forms, newspapers, calendars, calendars with loose pages, filing cards, cards, card-notices, postcards, comics, books, crossword puzzles, stationery, stickers, notepads, covers, bookmarks, drawing kits, notebooks, and owned by Agencja Wydawnicza TECHNOPOL Spółka z o.o. The PPO ruled that this trade mark lacks distinctiveness. TECHNOPOL filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 18 September 2009 case file VI SA/Wa 1164/09. Technopol filed a cassation complaint.


The Supreme Administrative Court in its judgment of 10 February 2011 case file II GSK 67/10 dismissed it and ruled that a trade mark which lacks primary distinctiveness will acquire distinctiveness or secondary meaning through advertising, if it is used for so long that it will be associated not with the original descriptive content, but the source of its origin – a specific goods produced by a particular manufacturer. The practice of different publishers who used different numbers and numerals in tiles of magazines did not allow for 1001 to acquire secondary meaning.

Trade mark law, case II GSK 903/09

January 5th, 2011, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 16 November 2010 case file II GSK 903/09 held that the whole evidence material that was gathered in the file on the grant of the right of protection for a trademark is an integral part of the evidence concerning the invalidation proceedings that was initiated as a result of a notice of opposition to a final decision of the Patent Office on the grant of a right of protection.

Trade mark law, case II GSK 691/09

October 5th, 2010, Tomasz Rychlicki

On 14 October 2002, the Polish company BWS Polska Sp. z o.o. based in Zaczernie applied for the right of protection for VARNA Z-256235 trademark for goods in Class 33 such as wines. The Polish Patent Office informed the applicant that it cannot be granted a right of protection because VARNA is also a geographical name of the Bulgarian city of Varna, which is located in the eastern Black Sea region famous for producing high quality white wines. Due to the fact that the seat of the applicant is located on Polish territory, the sign may lead the potential buyers to confusion as to the origin of goods. In response, BWS noted that the sign does not contain any false information, while simultaneously indicating that it is an importer and distributor of wines from south-eastern Europe, including Bulgaria.

The PPO received also comments issued by BSG Poland Sp. z o. o. in which the company raised objection of lack of statutory requirements for the protection of the questioned trade mark. Comments were sent to BWS but the company has not agreed to these statements.

The Polish Patent Office refused to grant a right of protection. The PPO ruled that VARNA sign is information on the place of the origin of wine – the site of a wine-growing and processing, without informing the consumer about anything else. According to the PPO, the importer has the right to register its trade mark, but the choice that violates the rights of manufacturers who conduct business in the region of Varna – infringes on the principles of merchant’s honesty. A situation in which the Bulgarian wine producers could not provide the Polish consumer that the wine has been produced by them is not fair, because they were outrun by an entity whose relationship with Bulgaria is at least questionable.

BWS requested the retrial of its case. The company reduced the original list of goods to wines from Bulgaria. It argued also that, under a contract with the Bulgarian multi-vendor, which is located in Varna, it has exclusive rights to sell original bottled VARNA wine. BWS indicated that the packaging of imported wine, includes bottle shape and color and shape, color, composition and location of the graphic label and it is its own creation. The company pointed out that the Trade Mark Register includs other signs being the name of national and international cities, towns, and in its opinion, the registration of VARNA trade mark will not be the monopolization of the word, because the Varna city remains a geographical name, the name of the appellation of origin or possibly the name of the seat of the suppliers of wine.

After reconsidering the matter, the Polish Patent Office upheld the contested decision. The PPO withdrew from contesting the trade as contrary to good merchant’s practice and public policy, pointing out also that the limited list of goods also been removed as an obstacle to the misleading nature of the sign. However, the PPO ruled that VARNA is the word trade mark, with no graphics, and indicates the origin of goods, therefore, it cannot be registered. The average consumer will read the sign as the Bulgarian city or geographic region on the Black Sea, famous for making wines. BWS filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 18 March 2009 case file VI SA/Wa 2098/08 held that the contested decision is the right. According to the Court the basic prerequisite for the grant of the right of protection is the distinctive character of a sign. The legal doctrine distinguishes between the so-called abstract distinctive ability and the concrete distinctive ability. The mark is characterized by the abstract distinctive ability, where a sign is examined abstractly (in isolation from the specific goods or services) capable of distinguishing the goods of one undertaking from those of another. The mark has concrete distinctive character when it is capable of distinguishing goods or services specified in the application to the Patent Office of goods or services of another company.

BWS filed a cassation complaint. The Supreme Administrative Court in its judgment of 13 July 2010 case file II GSK 691/09 reversed the contested judgment and refered the case back for reconsideration. The SAC held that the VAC overlooked in its deliberations, the fact that the disputed word mark VARNA is not present in the Polish language as the name of the city in Bulgaria. This spelling of the city name does not occur in Bulgarian either (it’s Варна). However, in Polish language the city is known as Warna. Meanwhile the VAC in assessing the facts of the case stated that it was undisputed that the sign is the name of the VARNA city in Bulgaria and that by placing it on the goods (wines originating from Bulgaria) it will indicate the relevant public without difficulty and without no additional actions the origin goods. The Court had the duty to assess the legality of the contested decision of the Polish Patent Office even if the allegation was not raised in the complaint. The law requires that the assessment whether the mark is sufficiently distinctive has to be made individually for each sign. The VAC should also examine the issue whether a questioned sign due to the use of the first letter “V” and not “W” (as is correctly spelled in Polish) has sufficient distinctiveness, although phonetically the “V” and “W” letters sound the same in the Polish language. Of those grounds the SAC held that the VAC has not made an overall assessment of distinctive character of the sign in question, taking into account its visual, aural or conceptual elements, and therefore the VAC infringed on Article 113 §1 and Article 145 §1 point 1 C of the Polish Act on Proceedings before Administrative Courts, since it dismissed the case without adequate explanation of the matter. The SAC noted also that the BWS claimed that, under the earlier decisions of the PPO, it acquired rights of protection for trademarks, even though they were the names of cities (Melnik – a city in Bulgaria), Calama (a city in Chile), or Beverly Hills (a city in California), however, the VAC did not respond to such arguments. In light of the settled case-law of the Supreme Administrative Court, the administration body can change its opinion on the content of the right conclusion, which should be issued in a specific type of cases, but it must carefully justify such a change, especially when changing the view of decisions taken in relation to the same applicant. The case-law of the administration may therefore be subject to change, if the authority demonstrates that there are reasonable grounds.

Procedural law, case II FPS 8/09

March 23rd, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 15 February 2010 case file II FPS 8/09 held that if the reasons of the judgment of the Voivodeship Administrative Court do not include a position as to the facts adopted as the basis for the contested decision, it may constitute an independent basis for the cassation appeal.

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.


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.


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“.

Trae mark law, case II GSK 380/07

March 5th, 2008, Tomasz Rychlicki

The Polish Patent Office refused to recognize the right of protection for CHECK-UP IR-0595827 registered under the Madrid Agreement Concerning the International Registration of Marks for Zabaione GmbH and used to designate the goods in class 25, such as clothing for men, women and children and bars for clothes. The PPO ruled that the questioned sign is similar to CHECK-IN IR-0552746 trade mark registered with an earlier priority from 19 June 2002, for Hohe-Modelle Maria Hohe GmbH & Co., intended for marking of the goods in Class 25 such as outerwear for ladies and children.

The PPO ruled that to fulfill the provisions of Article 132(2)(ii) of the IPL, it is necessary to accumulate of the several factors: the signs must be similar to each other, the goods for which trade marks are meant should be homogenous, and as the consequence of the similarity of the signs and the goods, there is a risk of confusion as to the origin of the goods covered by those trade marks.

The Voivodeship Administrative Court in Warsaw in its judgment of 23 April 2007, casefile VI SA / Wa 145/07 dismissed the complaint filed by legal predecessor of Zabaione GmbH. In the opinion of the VAC, the Polish Patent Office correctly refused to recognize the right of protection for a trademark CHECK-UP, pointing to its similarity to CHECK-IN trade mark and the similarity of the goods in class 25, and acknowleded that it may lead to the risk of misleading the public. According to the Court, the PPO correctly assessed the similarity of signs, and rightly pointed out that the trade marks are similar to each other both visually and phonetically because of the first parts of the two signs. Both trade marks are composed of two elements, and have the same first part, “CHECK” and accordingly the suffix “UP” in the applicant’s character and the suffix “IN” in the opposed sign interconnected by a hyphen. According to the Court, the signs are also similar in the aural aspect – they are pronounced very similarly. Different suffixes are not sufficient to prove diversity of both signs. These are components are of secondary importance. The court shared the view of the PPO that the recipient pays more attention to the first elements of signs, and less to the endings, because visually the first letters and syllables attract the most attention and are better remembered. The average customer usually does not examine in detail all the elements of the trade mark, but it perceives a given sign as a general impression.

The VAC agreed with the applicant that the two signs have completely different meaning in English, however, the similarity of signs shall be always from the perspective of the average consumer. The knowledge of English in Polish society is not yet sufficiently widespread. For a person who does not speak English language these signs are fanciful.

The Court shared the opinion of the PPO that both signs are intended to designate similar goods in class 25 and the goods are complementary. According to the Court, a customer who knows goods under the brand CHECK-IN, may think the same company introduces a new range of clothing for men, women and children, branded with CHECK-UP trade mark. The Court emphasized the fact that Article 132(2)(ii) of the IPL uses the term “identical or similar goods”, i.e. the similarity of the goods is not identical as their identity. Similarity occurs in the case of goods of the same kind of similar purpose and conditions of sales. Clothes, for which both trade marks are deisgnated are undoubtedly similar goods regardless of their differences in assortment. The average customer can therefore assume that they are produced by the same manufacturer. An outerwear manufacturer of high quality and original clothes designed for specific audiences, could in fact release a new line of clothing of average standard intended for a wider audience, marking it with CHECK-UP trade mark.

Referring to the applicant’s argument that the two signs benefit from protection in Switzerland and Germany, the Court emphasized that protection of trademarks in each country and the guarantee that effective protection is not absolute. The registration under the Madrid Agreement does not mean that a trade mark is protected automatically in each Member State. The applicant is seeking trademark protection on the Polish territory, so Polish law is applicable to the assessment of the trade mark registrability. The Company decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 28 February 2008, case file II GSK 380/07 dismissed the cassation. The SAC noted that the Company has not provided any arguments concerning the erroneous interpretation of Article 132(2)(ii) of the IPL. It did not indicated whether there was the breach of any regulations on administrative proceedings. If there is no infringement of the proceedings, it can not be argued that there is a breach of substantive law, in this case, Article 132(2)(ii), just because the plaintiff thinks the facts are different. The SAC ruled that if the cassation complaint is based on allegation of improper application of a given provision of substantive law, the arguments included in such a complaint should explain why the accepted legal basis for settlement of the contested provision has no relation to the facts established, and what other provision the court should apply.

Trade mark law, case II GSK 210/06

December 29th, 2006, Tomasz Rychlicki

On 11 July 2000, the Polish Patent Office has granted the right of protection to Zakłady Farmaceutyczne Polfa-Łódź Spółka Akcyjna for word trade mark “calcium c” R-122184 for goods in Class 5 such as pharmaceutical products. On 25 May 2001, the PPO received a requested for the invalidation of “Calcium C” R-122184 trade mark. The applicant was arguing that the questioned sign does not have a distinctive character. According to the applicant, the term “calcium” and “c” represent information about the properties and composition of the product bearing the mark.

The PPO in its decision of 11 February 2005, invalidated the right of protection for “Calcium C” R-122184. The PPO claimed that the word of calcium derived from the Latin and has no distinctive character, i.e. it is an informational sign, which should be available to all entrpretanours performing economic activity. While referring to the possibility of acquisition of secondary meaning the PPO held that the owner did not provide any evidence on this circumstance. The PPO considered that the mere fact that the company made a substantial investments in product advertising, or show significant sales, does not constitute itself a secondary meaning. Polfa-Łódź filed a complaint against this decision

The Voivodeship Administrative Court in its judgment of 20 February 2006 case file VI SA/Wa 1730/05 upheld the decision of the PPO. The VAC agreed that “Calcium C” does not have distinctive character. The Court stated that the sign is devoid of any fanciful elements, purely informational – indicating that the product is a calcium with vitamin C. The VAC ruled that in the interest of manufacturers of the pharmaceutical products is the exclusion of such signs from the registration, otherwise one individual entrepreneur could monopolize the use of these signs and that would lead to serious and unjustified restrictions on the activities of other entrepreneurs. Polfa-Łódź filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 December 2006 case file II GSK 210/06 found the appeal well-founded. The SAC held that there was a breach of procedrual provisions because the VAC did not explain and did not consider the impact on the outcome of the case of studies of public opinion, indicating the market share of the disputed product labeled with “calcium c” trade mark and the size of the expenditures on the promotion and marketing. The VAC restricted itself to general statements. It was assumed that for obtaining a secondary meaning the products labeled with “calcium c” must be marketed and available to buyers (the actual use of the trade mark). There was no doubt that this condition for the product bearing “Calcium C” trade mark has been met. However, the SAC noted that is has to be remembered that a trade mark acquires distinctive character as a result of its use only when a sign is able to identify the goods as originating from a particular entrepreneur. Undoubtedly for the SAC the facts in this case were not examined in detail and exhaustive.The Court ruled that the administrative proceedings that concerns the invalidation of the right of protection does not exclude the duty of the administrative body (the PPO) to take all necessary steps to clarify the facts of a case and to resolve it and to comprehensively collect and examine all evidential material, although the burden of proof rests on the one who has the legal interest.

In the legal literature and case-law, it is considered that the typical descriptive signs are in fact components of the goods, even if the indication is only a basic (essential) component, for example, “sand” for the cosmetic agent, which is an essential component. The Court cited W. Włodarczyk, The distinctive ability of a trade mark, Lublin 2001, pp. 199-200. The informational character of a trade mark is not changed when someone is using a sign from foreign language, even in case of terms that come from a dead language (e.g. Latin), when it concerns the professional, or a part of the general Polish vocabulary. The Court concluded that in any case, it would not have been justified to say that the fact that a sign contains information about the composition of a product, a limine precludes its recognition as a fanciful and bars the opportunity to register it as a trade mark, especially since it is possible to acquire secondary meaning.

Trade mark law, case II GSK 349/05

March 23rd, 2006, Tomasz Rychlicki

Imperial Tobacco requested the Polish Patent Office to invalidate the right of protection for “KIERY A K D mocne” R-131390 registered for GALLAHER POLSKA Sp.z o.o., for goods in Class 34 such as cigarettes.


Imperial Tobacco is the owner of the right of protection for “M mocne” R-68755 trade mark registered for goods in Clss 34 such as cigarettes. The PPO dismissed the request and explained that the Trade Marks Act contains no provisions on the so-called disclamation rule which is based on identifying which elements that are part of a registered trade mark should not be protected and deemed as informational sings/elements. The word “mocne” (in English: “strong”) refers to the characteristics (properties) of cigarettes, which is associated with the fact that strong cigarette contains more tar and nicotine than light cigarette. The M-Mocne brand due to the presence in the market for several decades acquired the status of well-known trade mark among smokers, which according to the assesment of the Polish Patent Office does not change the fact that “mocne” sign is deemed as the informational term. Imperial Tobacco filed a complaint against this decision.


The Voivodeship Administrative court in warsaw in its judgment of 20 January 2005 case file VI SA/Wa 333/04 agreed with the PPO and dismissed the complaint. The VAC held that it is wrong assumption that the use of the registered word-figurative trade mark “M mocne”, resulted in obtaining the status of well-known trade mark of one of its elements, i.e. “mocne” word. Imperial Tobacco filed a cassation complaint.

The Supreme Administrative Court in its judgment of 26 January 2006 case file II GSK 349/05 held that the word “mocne” lacks sufficient distinctiveness. Therefore, the right to use this term (as well as “lekkie”) have all manufacturers of tobacco/cigarettes. This does not affect the personal or property rights, because the word is not property. Moreover, the Court noted the term “mocne” can never acquire distinctive character and all the time should be considered as an informational indication.