Archive for: Art. 185 §1 PBAC

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“.

Trade mark law, case II GSK 296/06

September 30th, 2007, Tomasz Rychlicki

By its decision of 15 July 2003, the Polish Patent Office has granted a right of protection for FEMISTEN R-146192 trade mark for goods in Class 5 such as pharmaceuticals, pharmaceutical preparations. On 28 July 2004, the Patent Office received a notice of opposition, filed by Solvay Pharmaceuticals B.V. from Netherlands, and it based its oppsition on FEMOSTON IR-624469 trade mark also registered for goods in Class 5. The Dutch company argued that the FEMISTEN is confusingly similar to FEMOSTON both in the phonetic, and aural aspects, and both signs are meant to designate the same kind of goods. The owner of the registration requested the PPO to dismiss the case.

The PPO in its decision of 16 November 2005 dismissed the application for the invalidation of the right of protection for FEMISTEN trade mark. In support of the decision the PPO stated that in its opinion there is no similarity of the signs and it likely will not mislead consumers as to the origin of goods. Both signs were considered as a whole as fanciful. The component FEMI in FEMISTEN trade mark indicates that the product is designed for women. There was some similarity in structure and wording of these signs (the two characters have the same number of letters and syllables, and the difference comes down to differences of vowels in these assays), but in the assertion of the PPO it would not mislead the recipients as to the origin of the goods from a particular entrepreneur. FEMOSTON is a trade mark meant for designation of pharmaceutical preparations used in hormone therapy, which are bought only on prescription, so these goods are available to the customer through doctors and pharmacists. Products bearing FEMISTEN are the skin-care goods, available without a prescription and not associated with hormone therapy. The buyers of pharmaceutical products are adults, which, thoughtfully make their choice by paying attention.

Solvay filed a complaint. The Voivodeship Administrative Court in Warsaw in its judgment of 25 May 2006, case file VI SA/Wa 537/06 dissmied the complaint and ruled that the collected evidence made it clear, that the proprietor of FEMISTEN trade mark at the moment of filing a request for invalidation did not market the goods covered by the disputed mark, but according to the declaration of the holder, Glaxo intended to bring to the market skin care preparations in the form of ointments and gels available without prescription. The Court considered the findings of the Patent Office in this regard as correct. The legal doctrine and the case law established already the method of examining of the homogenity of goods. It should be assessed according to the type of the goods, purpose of the goods and the conditions of their sale, and the mere fact of belonging to a common class of goods is not a decisive argument for the recognition of the goods as belonging to the same kind. The Court ageed with the comparison of these signs that was made by the PPO and noted that the similarity of signs, as referred to in Article 9(1), point 1 of the TMA, is not an independent category, but it serves a purpose, namely the elimination by refusing to register the mark, which would under normal conditions of economic activity to deceive consumers as to the origin of goods. Evaluation of the similarity of the marks must be made at the same time from the perspective of the average consumer of the goods.

Solvay Pharmaceuticals B.V. Decided to file a cassation complaint. The Supreme Administrative Court i its judgment of 13 March 2007, case file II GSK 295/06 ruled that the issue of similarity of trade marks has both the factual and legal aspects, and that the administrative court can conduct its own assessment of the similarity criteria used by the Polish Patent Office. See “Trade mark law, case file II GSK 36/05“.

The SAC noted that according to settled case-law, the similarity of trade marks are resolved on the basis of risk of confusion as to the origin of goods. And the risk of confusion as to the origin of goods consists of similarity of goods and similarity of signs. See “Trade mark law, case file II SA 2778/01“.

Therefore, an essential element of the facts established for purposes of comparison of trade marks in terms of their similarity is to determine what goods bear these marks. Such a requirement does not occur when the same signs lack of similarities that may lead to a risk of confusion as to the origin of goods. This situation occurs in particular when the word trade marks compared in the visual and aural aspect show significant differences, so that mistakes are impossible for the consumer regardless of the way of purchasing terms and conditions of sale. The SAC noted that for unexplained reasons, it was adopted as the basis for comparisons of goods, by how they will be used, based only on arguments provided by Glaxo, where it was not disputed that when the decision was contested before the VAC, no commodity was marked with the questioned sign. It was also important to consider whether the observed similarity in the spelling of the two signs may lead to the risk of confusion. For these reasons, the SAC reversed the contested judgment and referred the case to the VAC for further re-examination.

Trade mark law, case II GSK 65/05

October 17th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 8 June 2005 case file II GSK 65/05 held that it is accepted in the case law that the sufficient distinctiveness of a trade mark should be examined in concreto and not in abstracto. This means also that the sign must relate to the specific goods listed in the application form. The Court ruled that informational and descriptive character of the sign is a characteristic that demonstrates the lack of concrete, not the abstract distinctive character of a sign. This case concerned the examination proceedings of the word trade mark “supermarket” Z-197930 that was applied for by the Polish company AGORA S.A.