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Archive for: Art. 184 PBAC

Access to public information, case I OSK 667/11

October 23rd, 2011, Tomasz Rychlicki

The mayor of the Polish town Rabka-Zdrój refused to disclose land-use planning maps. The request was filed according to the provisions of the Polish Act of 6 September 2001 on Access to Public Information – API – (in Polish: Ustawa o dostępie do informacji publicznej), published in Journal of Laws (Dziennik Ustaw) No. 112, item 1198, with subsequent amendments. The mayor decided that copyright law does not allow for the disclosure, because these maps were created by the Studio of Architecture and Urban Design from Kraków. The applicant filed a complaint against this decision. The Voivodeship Administrative Court in Kraków in its judgment of 22 November 2010 case file II SAB/Kr 114/10 ordered to provide the requested information. The Mayor filed a cassation complaint.

The Supreme Administrative Court in its judgment of 15 July 2011 case file I OSK 667/11 dismissed it, and held that as public information are deemed not only documents that were directly created/edited and produced by a public authority, but such a character have also documents that the authority uses to carry out the tasks entrusted to the law, even if the copyrights belong to another entity. The most important is the fact, that these documents are used to carry out public tasks by certain authorities and have been produced on behalf of those bodies. Therefore, it is not about exercising copyrights, but about the access to the content of the document that was created on behalf of public administration in order to carry out public tasks. The SAC noted that this opinion is already established in the case law of administrative courts for many years. For instance, the judgment of the Supreme Administrative court of 9 February 2007 case file I OSK 517/06, the judgment of the SAC of 7 December 2010 case file I OSK 1774/10, or the judgment of the SAC of 18 September 2008 case file I OSK 315/08.

In this case, the Court had no doubt that the maps were made in order to perform a specific public task, and were commissioned by public administration body. Its disclosure is not deemed as exercise of the copyright, but as the implementation of the right to access public information. If, there were statutory barriers to disclose such information in a certain way or in a particular form, or there were statutory grounds for refusal of access to public information, the Mayor was obliged to deal with the request in the form of process. However, the lack of disclosure, and lack of procedural decisions in this matter meant, that it was administrative inaction.

Trade mark law, case II GSK 553/10

August 19th, 2011, Tomasz Rychlicki

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

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

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

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

Trade mark law, case II GSK 1088/09

February 19th, 2011, Tomasz Rychlicki

Polish company Śnieżka Invest sp. z o. o. from Świebodzice requested the Polish Patent Office to decided on the lapse of the right of protection for the trademark GOPLANA MICHAŁKI R-139668 owned by Jutrzenka S.A. Śnieżka claimed that the questioned trade was not genuinely used in the period of five successive years after a decision on the grant of a right of protection has been taken. Śnieżka also owns michałki R-72668 trade mark and the company from Świebodzice argued that the market existence of GOPLANA MICHAŁKI sign would interfere its business.

Jutrzenka argued that there existed very serious reasons of non-use – the pending administrative proceedings for invalidation of its trade mark. Jutrzenka claimed that the use of the mark in the course of those proceedings would be irrational and it would expose the company to any future claims of Śnieżka. The PPO in its decision of 1 July 2008 no. Sp. 398/07 held that GOPLANA MICHAŁKI trade mark has lapsed. Jutrzenka filed a complaint. The Voivodeship Administrative Court in Warsaw in its judgment of 26 June 2009 case file VI SA/Wa 81/09 dismissed it. Jutrzenka filed a cassation complaint.

The Supreme Administrative Court in its judgment of 14 December 2010 case file II GSK 1088/09 dismissed the complaint and ruled that the case for invalidation of the trade mark registration does not qualify as an important reason for non-use thereof. The serious reasons should be factual and/or legal obstacles. These may be external events of force majeure nature that are impossible to predict and prevent. All circumstances relating to ordinary business risks, which concerns the current operations of each business cannot be deemes as such obstacles. A legal obstacle,preventing the use of a trade mark may be, for example, an individual administrative act prohibiting the use of the mark.

Procedural law, case II GZ 141/10

July 12th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its order of 7 July 2010 case file II GZ 141/10 held that when examining the application for grant the right of assistance, a court does not undertake any action where the accurate data to allow the full assessment of the financial status and the applicant’s ability to pay are not known, because the applicant avoids to submit of relevant documents on this subject. The right of assistance covers the exemption from court fees and the establishment of the lawyer, tax advisor, or patent attorney. It is the interests of the party to demonstrate the merits of an application in the light of the statutory conditions for granting the right of assistance. See also “Procedural law, case FZ 165/04“.

Categories: Art. 184 PBAC | Art. 245 PBAC | Art. 246 §1 PBAC | Polish Act on Proceedings Before Administrative Courts | Polish Supreme Administrative Court.

Personal data protection, case I OSK 756/09

July 11th, 2010, Tomasz Rychlicki

A former entrepreneur (natural person) requested a telecommunications company to remove his personal data that were used for marketing purposes. The company did not want to take into account the above-mentioned demands, arguing that the rights provided in Article 33 of the Polish Act of 29 August 1997 on the Protection of Personal Data – PPD – (in Polish: Ustawa o ochronie danych osobowych), unified text published in Journal of Laws (Dziennik Ustaw) of 6 July 2002, No. 101, item 926, with subsequent amendments, are not afforded for persons who perform or performed professional business activity (entrepreneurs).

Article 33
1. At the request of the data subject, within the period of 30 days, the controller shall be obliged to notify the data subject about his/her rights, and provide him/her with the information referred to in Article 32 paragraph 1 point 1-5a as regards his/her personal data, and in particular specify in an intelligible form:
1) the category of personal data contained in the file,
2) the means of data collection,
3) the purpose and the scope of data processing,
4) the recipients of the data and the scope of access they have been granted.
2. At the request of the data subject, the information referred to in paragraph 1 shall be given in writing.

The Supreme Administrative Court in its judgment of 15 March 2010 case file I OSK 756/09 held that provisions of Article 6 of the PPD does not differentiate the rights of individuals, depending on whether they are performing business activity or not. In this situation, there was no reason to exclude information about natural persons conducting business/economic activity from the protection guaranteed by the PPD.

Article 6
1. Within the meaning of the Act personal data shall mean any information relating to an identified or identifiable natural person.
2. An identifiable person is the one who can be identified, directly or indirectly, in particular by reference to an identification number or to one or more factors specific to his/her physical, physiological, mental, economic, cultural or social identity.
3. A piece of information shall not be regarded as identifying where the identification requires an unreasonable amount of time, cost and manpower.

Personal data protection, case I OSK 633/08

March 11th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 3 July 2009 case file I OSK 633/08 held that the processing/storage/retention of personal data in backup copies of bank’s IT system is nothing but the processing of these data, and such processing is possible only in all cases defined by the provisions of the Polish Act of 29 August 1997 on the Protection of Personal Data – PPD – (in Polish: Ustawa o ochronie danych osobowych), unified text published in Journal of Laws (Dziennik Ustaw) of 6 July 2002, No. 101, item 926, with subsequent amendments. In case, where the credit agreement was not concluded, the processing of personal data in backup copies has no justification in the provisions of the PPD and there is no such situation as referred in Article 26 of the PPD.

Article 26
1. The controller performing the processing of data should protect the interests of data subjects with due care, and in particular to ensure that:
1) the data are processed lawfully,
2) the data are collected for specified and legitimate purposes and no further processed in a way incompatible with the intended purposes, subject to the provisions of paragraph 2 below,
3) the data are relevant and adequate to the purposes for which they are processed,
4) the data are kept in a form which permits identification of the data subjects no longer than it is necessary for the purposes for which they are processed.
2. The processing of data, for the purpose other than intended at the time of data collection is allowed provided that it does not violate the rights and freedoms of the data subject and is done:
1) for the purposes of scientific, didactic, historical or statistical research,
2) subject to the provisions of Article 23 and Article 25.

The SAC also ruled that such processing is also not justified by the provisions of the Act on Banks Law.

Trade mark law, case II GSK 361/06

December 12th, 2008, Tomasz Rychlicki

On 9 July 1998, the Polish company called “Przedsiebiorstwo Uslug Technicznych INTEL Spólka z o. o.” (PUTI) applied for trade mark reigstration for word-figurative sign “i INTEL” in class 37 for services such as: electric appliance installation and repair, fire alarm installation and repair, burglar alarm installation and repair, installation and repair of extinguishing and smoke ventilation systems, installation and repair of access control systems, and in class 38 for industrial television. The Polish Patent Office has granted the protection rights in its decision of 9 December 2002. On 21 July 2003, Intel Corporation has filed an opposition against the PPO’s decision. Since the trade mark application was filed while the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, was in force, so the opposition had to be based on its article 8(1) and (2) and article 9(1)(i) and (ii).

Article 8
A trademark shall not be registrable if:
(i) it is contrary to law or to the principles of society coexistence;
(ii) it infringes the personal or economic rights of third parties;

Article 9
(1) Registration of a trademark for goods of the same kind shall not be permissible where:
(i) it resembles a mark registered on behalf of another enterprise to such an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity;
(ii) it is similar to a trademark that is well known in Poland as a trademark for goods of another enterprise to an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity;

To support its opposition, Intel Corp. has provided arguments that a sign is applied for or registered in contrary to the principles of society coexistence if it seeks to use or to undermine the reputation of other trade mark, regardless of the nature of the goods or services to which it refers. Intel Corp. successfully argued that Intel is word trade mark which is well-known and reputable. It is widely recognized and valued as a synonym for the highest quality products branded by this sign (or its derivatives) in the IT sector. The widespread knowledge of that trade was also confirmed in the Polish Patent Office’s decision in early 1994. The features and the highest quality of Intel brand products have also to be attributed to the Intel Inside trade mark because of its equally vast, global popularity and strong positive associations among customers. Intel R-93693 and Intel Inside R-86431 trade marks were registered in Poland in priority, respectively of 8 November 1990 and 18 June 1991.

“i Intel” is a sign which has a distinctive part consisting of Intel sign which is similar to Intel Copr. trade marks. It leads consumers to think that there is an association between Intel Corporation and a disputed sign, consequently, there is a risk of confusion as to the origin of goods or services which are identified by the disputed mark. According to Intel Corp., the use of the contested trade mark by PUTI was based on the reputation and the widely recognized quality of Intel trade mark. PUTI registration was made in favour of its marketing business and for the economic benefits of the Polish company. This kind of behavior also brings the risk of confusion among consumers as to the identity, trade and economic links and between Intel Corporation and PUTI. In addition, Intel Corporation has filed the explanatory memorandum arguing that “i Intel” sign violates the applicant’s personal rights. The firm (protected as personal rights under the Polish Civil Code) is the name under which Intel Corporation conducts its business, it is also the reputation of a company, to which the applicant has worked since 1968 (the establishment of Intel Corporation in the U.S.).

Since fields of business activities of PUTI and Intel Corp. did not overlap, The Polish firm argued that Intel Corp. had not demonstrated that the disputed trade mark makes difficult for Intel to use its company name. PUTI has also argued that the opposition should not be based on article 9 of the PTA since the disputed trade mark is designated for services not goods. PUTI argued that it has been using the name “Przedsiebiorstwo Uslug Technicznych INTEL” in 1989 and 1990, which was before Intel Corporation had registered its trade marks in Poland.

The Polish Patent Office invalidated “i Intel” trade mark in its decision of 19 October 2005. It was proved before the PPO that PUTI was founded on 23 July 1997 as a limited liability company, and previously (from 1 November 1983) it had operated on the market in the form of a civil company and the name Intel had been used for the first time in its firm in 1994. In PPO’s opinion, PUTI’s use of “i Intel” sign with ® before trade mark registration was granted was also a proof of taking the advantage of reputation of Intel Corp. trade marks, which was contrary to the principles of society coexistence that were defined in this case as a matter of fairness trade.

PUTI appealed. The Voivodeship Administrative Court in Warsaw in its judgment of 21 April 2006 case file VI SA/Wa 126/06 dismissed the appeal. The court held that trade marks of Intel Corp. that were registered with the earlier priority are renowned in Poland in relation to the persons involved in electronics, computers, electrical and electronic equipment of various kinds, and PUTI’s application for the contested trade mark was intended to use the reputation of Intel Corp. trade mark portfolio. In court’s opinion the Polish Patent Office has had to compare these trade marks with the disputed sign in aural verbal and visual aspects and it has reasonably concluded that there is a clear likeness between them, and given that the signs are used for determining goods, which are compatible with regard to services to which the disputed trade mark is intended use, so there was a condition for the inadmissibility of the disputed trade mark registration within the meaning of article 9.

PUTI filed a cassation complaint before the Supreme Administrative Court. However, the Court dismissed the case in its judgment of 15 May 2007 case file II GSK 361/06. SAC explicitly held that Intel is well-known trade mark on the Polish market (strong sign) and its reputation was not questioned even by the Polish company. Consequently, it should be considered that the danger of confusion between trade marks by customers, is the greater, the more well-known (or as the Court also said – standardized) is a trade mark with an earlier priority, because customers’ memory directs them in a particulary easy way, to trade marks which are well-known on the market.

Procedural law, case II GSK 350/06

November 24th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 18 April 2008 case file II GSK 350/06 held that the duties of the Polish Patent Office to take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public cannot be “transferred” to the litigation proceedings in patent cases based on the provisions of Article 256(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.

Article 256
1. The provisions of the Code of Administrative Procedure shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by this Law..

2. To costs of proceedings the provisions applied in civil law proceedings shall apply accordingly.

3. The provisions of the Code of Administrative Procedure governing re-examination, at a party’s request, of cases, in which decisions not liable to appeal were taken, shall not apply to decisions on merits taken after hearing.

3¹. The cases referred to in Article 2553(2) may be requested to be re-adjudicated. A time limit for submitting a request shall be, in case of a decision made – two months and in case of an order issued – one month from the date of the decision or the order being served upon the party.

4. (repealed)

This is because the Article 255(4) of the IPL includes provisions that fully cover this regulation and precludes the possibility of the complementary use of provisions of Article 7 and 77 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, 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.

Article 255
4. The Patent Office shall settle cases in litigation procedure within the scope of the request and shall be bound by the legal ground invoked by the requesting party.

The Court also ruled the such findings do not preclude, of course, the activity of the Polish Patent Office to collect evidence, provided that they fall within an already pending case in litigation proceedings.

Trade mark law, case II GSK 269/06

October 6th, 2007, Tomasz Rychlicki

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

Z-234207

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

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

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

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

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

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

Trade mark law, case II GSK 265/06

May 7th, 2007, Tomasz Rychlicki

On 1 December 2003, Telekomunikacja Polska S.A, filed an opposition against the decision of the Patent Office of 26 March 2003 granting the right of protection for word-figurative trade mark Teleaudio R-143563 for Teleaudio Sp. z o.o. for services in classes 38 and 41 such as line and/or phone numbers renatal, audio-text services, organization of entertainment and education competitions.

R-143563

TP S.A. stated that it is the owner of AUDIOTELE R-101622 trade mark and word-figurative trade mark AUDIO TELE R-101623, registered with the earlier priority, which are used in trade from 19 March 1995 for audio-text services. TP S.A. argued that it was the first company that lanched on 19 March 1995, a national audio-text system under the “audiotele” brand name. TP S.A. argued also that TELEAUDIO Sp. z o.o. entered the market of audio-text services almost a year later, and deliberately chose imitating sign for its firm (company name) and the trade mark, and copied the graphic which depicts a phone. According to TP S.A. such actions violated its property rights and might mislead the public as to the origin of services.

The PPO ruled that the differences between the trade marks were not sufficient to eliminate the similarity between the compared signs. The essential elements of those marks – the words AUDIOTELE and TELEAUDIO were confusingly similar. According to the PPO the figurative elements of marks perform only a supporting role, as they will be perceived by the public as a decoration, not as the most significant elements that identify the source of the services. The PPO has indicated that the average customer will focus on the words AUDIOTELE and TELEAUDIO because in assessing the similarity of characters as a whole, the dominant and convergent elements of the sign are of crucial importance.

R-101623

Teleaudio Sp. z o.o. decided to file a complaint. The Voivodeship Administrative court in Warsaw in its judgment of 25 April 2006 case file VI SA/Wa 2082/05 dissmissed the case. In the opinion of the VAC, the PPO has properly analyzed the similarity of TELAUDIO R-143563 trade mark and opposing AUDIOTELE sign. Both signs had to be compared, given the verbal, aural and semantic similarity. The VAC held that the case in question concerns the similarity of signs in verbal, aural and semantic aspects. The Court considered these factors as affecting the risk of confusion. The VAC noted that the PPO has analyzed the sign as a whole, and rightly presented the idea about the possible characteristics that may affect the ability to distinguish one trade mark from another. Teleaudio Sp. z o.o. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 265/06 dismissed the case. The SAC ruled the VAC accurately assessed the similarity of signs as an integral whole. The SAC noted also that the case-law of the Supreme Court established the rule that the legal assessment on the basis of Article 7 and Article 9(1)(i) and (ii) of the TMA with regard to word-figurative trade mark should be based on an integral whole of a trade mark, and not only one of the words, which is only one of its components (see the judgement of the Supreme Court of 11 March 1999, case file III RN 136/98, published in OSN, 2000/1/2).

The Court ruled also that the issue of similarity of trade marks is both the factual and legal category. See also “Trade mark law, case II GSK 36/05“. The Court ruled that the VAC rightly pointed out that the similarity of signs is examined and assessed based on common elements of marks, not by the differences. Thus, the differences do not preclude the similarity of the signs. The examination of the similarity should thus lead to the objective similarities and differences, and their sum should be related to the average attention of a reasonable consumer (see U. Promińska, Naruszenia praw na dobrach niematerialnych, PIRzP, 2001, p. 95 and literature cited therein).

Trade mark law, case II GSK 173/06

November 8th, 2006, Tomasz Rychlicki

On 10 December 2003, Eska Nord Sp. z o. o. requested the Polish Patent Office to decide on the lapse of the right of protection for “Radio 73,2 Fm ESKA” R-98909 trade mark due to the non-use. The applicant explained that since 1993 it operates as a commercial radio station that broadcasts its program in the Tri-City region (Gdańsk, Sopot and Gdynia) and the surrounding area, using the ESKA-NORD brand. The applicant has claimed its legal interest (locus standi) from the fact that the District Court in Gdańsk issued on 1 August 2003 an order prohibiting Radio ESKA S.A. the broadcasting at radio frequency 94.6 MHz in Gdynia and 90.7 Mhz in Gdansk, and prohibiting radio broadcasting and advertising under the names Eska and Eska Trójmiasto.

R-98909

Radio Eska S.A. sought to dismiss the request and provided the correspondence with the National Broadcasting Council on the use in 1999, of the questioned trade mark in the registered form. The company explained also that it ceased using in “73.2” number in the questioned sign as it was justified because it changed the broadcasting frequency under the Regulation of the Minister of Communications dated 16 December 1999 on the frequency allocation and frequency ranges in the Republic of Poland and the conditions of their use Official Journal No 109, item 1252.

The PPO its decision of 21 February 2005 dismissed the request and pointed out that timeframe to be considered whether disputed trade mark was used and in what form includes the period of 5 year, i.e. between dates of 10 December 1998 and 10 December 2003.

The Voivodeship administrative Court in Warsaw in its judgmen of 7 February 2006 case file VI SA/Wa 1749/05 dismissed the complaint. The Court, pointed out to the fact that the use of the trade mark in broadcasted programs and in correspondence was the use in the course of trade and it met the requirement of genuine use as referred to in the IPL. The Court also noted that under Article 19(1) of the TRIPS the important reasons of the non-use is justified, are import restrictions or other government requirements for goods or services protected by a trademark.

The Supreme Administrative Court in its judgment of 10 October 2006 case file II GSK 173/06 held that the use of a trade mark in a form that differs from that for of a trade mark for which it was granted a right of protection, but in elements which do not alter its distinctive character, is also deemed as the genuine use. The SAC ruled also that there was the use of the trade mark in the form of RDS (Radio Data System) during the broadcast of radio programs and within a website available at eska.pl, presenting the logo of the station. In the first case while listening to the station with a radio equipped with RDS there were presented verbal communications, including communication with the station name (in this case: Radio Eska).

Trade mark law, case II GSK 115/06

October 29th, 2006, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 20 September 2006 case file II GSK 115/06 held that the surname or family name could serve as a trade mark that distinguishes the goods or services of a particular undertaking from goods or services of the same kind that originate from other entrepreneurs. However, in the present case, the owner of the trade mark KOZŁOWSKI R-115647, before he applied for registration of this sign, had the knowledge that for many years before registration of his trade mark, the Kozłowskis family have used their surname to designate products such as brushes and brooms. Pursuant to Article 7(1) of the TMA, as a trade mark may be registered only such a sign, that possess sufficient distinctiveness in normal economic activity. Therefore, the Voivodeship Administrative Court in its judgment of 7 December 2005 case file VI SA/Wa 905/05 properly found that, in the case described above, the purchaser of the goods would have considerable difficulty in identifying the source of origin of goods and reasonably assumed that the trade mark subject of this preceedings does not have a concrete distinctive character.

Trade mark law, case II GSK 36/05

January 30th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 11 May 2005, case file II GSK 36/05, published in the electronic database LEX under the number 166070, ruled that the issue of similarity of trade marks is both the factual and legal category. Such a specific legal status is a prerequisite to justify an overall reference to the alleged breaches of procedural and substantive law, which are related to this issue and the administrative court can conduct its own assessment of the similarity criteria used by the Polish Patent Office.

Z-175554

This case concerned the examination proceedings of the application for word-figurative trade mark 222 PANORAMICZNE Z-175554 filed by Oficyna Wydawnicza PRESS-MEDIA from Mielec.

Categories: Art. 184 PBAC | likelihood of confusion | Polish Supreme Administrative Court | similarity of signs | trade mark examination.

Procedural law, case FZ 165/04

January 12th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its order of 18 June 2004 case file FZ 165/04 ruled that the burden of proof to demonstrate the circumstances justifying the granting of the right of assistance lies with the applicant for the grant of such assistance. The right of assistance covers the exemption from court fees and the establishment of the lawyer, tax advisor, or patent attorney. See also “Procedural law, case II GZ 141/10“.

Categories: Art. 184 PBAC | Art. 245 PBAC | Art. 246 §1 PBAC | Polish Act on Proceedings Before Administrative Courts | Polish Supreme Administrative Court.