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Archive for: Art. 28(1) TMA

Trade mark law, case II GSK 503/08

May 6th, 2009, Tomasz Rychlicki

In case of a request for invalidation of the right of protection to PLANTAGINIS R-105263 trade mark filed by Polish company Gemi from Karczew, the Supreme Administrative Court in its judgment of 20 November 2008, case file II GSK 503/08 ruled that it is usually assumed that legitimate interest is the normative category of the substantive law and its source is the substantive law. On this basis the party of an administrative proceedings is entitled to request to specify his or her powers and duties or require an administrative court or body to perform an examination of a legal act or acts in order to protect him or her against violations that was made by this legal act or acts and to lead to a situation that it is consistent with the law.

The legitimate interest may also derive from legal norms not only belonging to the administrative law. The confirmation of legitimate interest is always due to the likely connection between the norm of the substantive law and the situation of legal entity to the effect that the act of application of this legal norm (eg, an administrative decision) may affect the legal position of this entity in the field of the substantive law. The SAC also agreed with the opinion of academics that there aren’t any universal definition of a legitimate interest in the field of industrial property law that would include complex situations to justify the submission of the request for invalidation of an exclusive right.

The SAC noted that the case law indicates article 20 of the Constitution of the Republic of Poland of 2nd April 1997 as published in Dziennik Ustaw (Journal of Laws) No. 78, pos. 483.

A social market economy, based on the freedom of economic activity, private ownership, and solidarity, dialogue and cooperation between social partners, shall be the basis of the economic system of the Republic of Poland.

The Court also pointed out to article Paragraph 6(1) of the Law on Freedom of Economic Activity (in Polish: ustawa o swobodzie dzialalnosci gospodarczej) corresponding to the content of article 5 of the Act of 19 November 1999 – Law of economic activity (in Polish: Prawo dzialalnosci gospodarczej), Dziennik Ustaw (Journal of Laws) No. 101, pos. 1178, as amended.

The assumption, conduct and termination of economic activity shall be free to all on an equal-rights basis, subject to conditions determined in provisions of law.
2. The public administration authority shall neither demand nor make its decision in the matter of the assumption, conduct, or termination of economic activity by an interested party conditional upon satisfaction by this party of additional conditions, including without limitation on the submission of documents or disclosure of information other than that set out in provisions of law.

These are the basis for deriving the legitimate interest for the party seeking for the standing in the proceedings for the lapse or invalidation of a right of protection for a trade mark.

When deriving the legitimate interest from the aforementioned legal regulations in case of the invalidation proceedings of a trade mark it is necessary to demonstrate why and how the right of protection for PLANTAGINIS R-105263 trade mark affect on the legal position of Gemi Company as an entrepreneur. Each entrepreneur has the right to a trademark if the right is not in conflict as to the form, and the period of validity of the previously acquired trade mark right of the same sign. It was necessary to demonstrate that the GEMI’s legitimate interest is relevant to its legal position, because it is current, real, direct and their own (these are the most common elements and features of the legitimate interest), such as verifiability of the legitimate interests and the possibility of obtaining specific benefits. In such cases it concerns the so-called “reflections right” which is creating the legal position of a party not directly, but by a decision of the Polish Patent Office which is “taking back” a right of protection for an earlier trade mark granted to another company.

The SAC dismissed the cassation complaint because it has found that GEMI company did not file its request for invalidation PLANTAGINIS R-105263 trade mark rights in order to obtain the right of protection for the disputed mark for its own. It also did not demonstrate the existence of any obstacles to conduct its business during the sale of goods marked with the disputed trade mark.

Trade mark law, case file II GSK 138/07

September 10th, 2008, Tomasz Rychlicki

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

Polish company (Koral company) requested a motion to declare the expiration of trade mark rights of Red Bull’s sign in class 30 claiming that Austrian company failed to put to genuine use of the registered trademark 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 appealed to the Voivodeship Administrative Court in Warsaw. Polish company did not agree with PPO’s findings as regards trade mark rights’ expiration date and Austrian company claimed that PPO should consider reputation of its trade mark.

The VAC 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 case file II GSK 138/07 ruled that the reputation of a trade mark is irrelevant when there is invalidation proceedings. This is not the stage. 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 Company has also called into question the date of expiry of the right of protection. It was the reason for SAC to discuss the issue in extended chamber. The Court gave its opinion in judgment of 23 April 2008, act signature II GPS 1/08. See also “Trade mark law, case II GPS 1/08“.

Trade mark law, case II GSK 252/06

June 30th, 2008, Tomasz Rychlicki

Imperial Tobacco Limited from the UK requested the Polish Patent Office (PPO) to decide in litigation procedure on the lapse of a right of protection for MOON R-91725 trade mark owned by Polish company Altadis Polska S.A. The British company based its legal interest on the fact the it has applied for recognition on the territory of the Republic of Poland of the protection for the international trademarks with the word element MOON IR-811335, IR-812000, IR-811953 and IR-811992, intended to designate goods in class 34 and desire to use in Poland, their MOON trade marks. Imperial also pointed out that MOON R-91725 trade mark was not used on Polish territory in the way that is required by law.

Altadis demanded the dismissal of the request. Polish company argued that Imperial has no legal interest in seeking the lapse of a right of protection for MOON R-91725 trade mark, because John Player & Sons Limited of Ireland is the company entitled to the international registration of trade marks.

The PPO dismissed the request and PPO’s decision was upheld by the Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 30 March 2006, case file VI SA/Wa 2048/05. The VAC bases its reasoning on the lack of legal interest. Imperial filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 February 2007 case file II GSK 252/06 held that the entrepreneur who plans to place on the domestic market identical or similar goods bearing a sign that is identical or similar to registered but unused trademark, has a legal interest in requesting the PPO for the decision on the lapse of a right of protection for the trade mark because of its non-use by the holder, provided, however, that such entrepreneur will demonstrate that its intention is real and genuine, especially if it’s a manufacturer of such goods and introduces them to a common market under the sign.

Trade mark law, case II GSK 13/07

July 19th, 2007, Tomasz Rychlicki

Wierzbicki Jan, Krzywdziński Andrzej Przedsiębiorstwo Produkcyjno Handlowo Usługowe MACRO applied to the Polish Patent Office (PPO) for “ŚWIAT KAWY I HERBATY” (TEA AND COFFE WORLD) trade mark Z-205579, for goods in classes 30, 42. Dariusz Z. who conducts its business under the firm “Świat Kawy i Herbaty” and who had established contractual relationships with the applicant, submited to the Patent Office his observations as to the existence of grounds that may cause a right of protection to be denied. The PPO refused to grant rights of protection for “ŚWIAT KAWY I HERBATY” trademark. MACRO filed a complaint. The Voivodeship Administrative Court in its judgment of 27 July 2006 case file VI SA/Wa 871/06 upheld the contested decision and MACRO filed a cassation complaint.

The Supreme Administrative Court in its judgment of 24 May 2007 case file II GSK 13/07 held that the firm (company name) of a individual person is its personal right/interest and it may be an obstacle to registration of a trade mark. According to the SAC, the sale of goods on the stand/trading post under the trade name identical to that trade mark cannot be treated as a trade mark use since the essence of the trade mark is to identify the goods with a particular trader, and the use of the mark should primarily consist of placing a mark on the products or their packaging.