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Archive for: Art. 31 TMA

Trade mark law, case II GSK 642/08

March 19th, 2009, Tomasz Rychlicki

On 25 October 1995, Tomasz Bednarski, the Polish entrepreneur conducting business under the company name Optyk Tomek in Warsaw, applied for the registration of the word trade mark Optometrysta (English: optometrist) in Class 42 for services such as examination of eye refraction, selection of spectacles for individual needs, selection of contact lenses for individual needs, selection of telescopic spectacles for individual needs. On August 4 1998, the trade mark was registered by the Polish Patent Office under number R-104424.

In February 2007, the President of the Executive Board of the Polish Society of Optometry and Optics informed the Polish Patent Office that the word optometrysta is a common profession name, used at least since 1983. In March 2007, the request for invalidation of the trade mark was filed by the President of the Patent Office, based on claims that the registration was granted against Article 7(2) of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

The only signs that shall be eligible for registration as trade marks are those that have sufficient distinctiveness in ordinary economic activity.

A sign shall not have sufficient distinctiveness if it simply constitutes a generic designation of the product, if it simply makes a statement as to the properties, quality, number, amount, weight, price, purpose, manufacturing process, time or place of production, composition, function or usefulness of the goods or any similar information that does not enable the origin of the goods to be determined.

This was in connection with Article 167(2) 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.

The General Public Prosecutor of the Republic of Poland or the President of the Patent Office may, in the public interest, request that the right of protection for a trade mark be invalidated or intervene in an invalidation action already pending.

According to the President of the Polish Patent Office, the trade mark Optometrysta is simply the name of a profession. The World Council of Optometry defines optometry as a healthcare profession that is autonomous, educated, and regulated (licensed/registered), and optometrists are the primary healthcare practitioners of the eye and visual system who provide comprehensive eye and vision care, which includes refraction and dispensing, detection/diagnosis and management of disease in the eye, and the rehabilitation of conditions of the visual system. In 1999 the profession was entered on to the list of professions performed in Poland, which is kept by the Ministry of Labour and the President of the Central Statistics Office.

During the hearings at the Patent Office, the owner of the mark declared that he performed the services under the mark, and according to his knowledge, the mark had not been earlier registered in the name of any other party. In view of this, he decided to apply for registration of the mark with the aim of obtaining financial benefit. The Adjudicative Board of the Polish Patent Office, by virtue of its decision of May 30 2007, case file Sp 141/07, invalidated the trade mark right. The Patent Office argued that before the date of filing an application for registration of the sign as a trade mark, it functioned as the name of a profession in the optical industry. At the date of invalidation, the subject mark does not have any distinctive character, and therefore no one should be granted the exclusive protection right for the mark, and at the same time a monopoly thereto.

Bednarski lodged a complaint with the Voivodeship Administrative Court (VAC) in Warsaw (decisions of the Patent Office are subject to complaints with the Administrative Court). He questioned procedural aspects of the Patent Office’s decision, and argued that the Patent Office should base the request for invalidation on article 31 of the TMA.

The request for annulment of a right deriving from registration of a trade mark may be filed within five years of the date of registration. After the expiry of that period, such request may only be filed in respect of an owner who has obtained a registration in bad faith.

According to Bednarski, the term for filing this request terminated in 2004, and the Patent Office had not made reference to bad faith action in order to file the request for invalidation after expiry of this term. The District Administrative Court rejected the trade mark owner’s arguments. The Court, in its decision of December 13 2007, case file VI SA/Wa 1708/07, held that the five-year statutory period for filing the request for invalidation had not expired before the entry into force of the new Law on Industrial Property, which provided different regulations and opened new opportunities to file the request for invalidation. These regulations are set forth under Chapter 6 of the Law on Industrial Property entitled “Invalidation and Lapse of the Right of Protection for a Trade Mark”. Apart from exceptional circumstances specified therein, the legislature has waived the deadline for requesting invalidation proceedings. As of August 22 2001, no time limit will restrict the possibility of requesting invalidation of the right of protection. Thus, after August 22 2002, the President of the Patent Office, acting in the public interest, may at any time request the invalidation of the right of protection that was granted against the law.

Bednarski filed a cassation complaint with the Supreme Administrative Court. However his motion was dismissed by virtue of a decision of the Supreme Administrative Court of January 20 2009 case file II GSK 642/08. The decision is final.

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.

R-90583

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.

R-83022

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 167/06

March 11th, 2006, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 24 February 2006 case file VI SA/Wa 1946/05 held that the term mentioned in the provisions of Article 31 of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, is a term of substantive law, and it should not be shortened or extended.

Article 31
The request for annulment of a right deriving from registration of a trademark may be filed within five years of the date of registration. After the expiry of that period, such request may only be filed in respect of an owner who has obtained registration in bad faith.

The Court also ruled that bad faith mentioned in Article 31 of the TMA, cannot be treated extensively in relation to all grounds for invalidation of the registration, because this would undermine the sense of the institutions of mutability of the registration. The Supreme Administrative Court in its judgment of 5 December 2006 case file II GSK 167/06 dismissed the cassation complaint. This case concerned DELIC-POL R-81280 trade mark.