Polish IP & IT law – copyright trademark computer internet telecomm

Archive for: Art. 4 TMA

Trade mark law, case Sp. 500/10

December 10th, 2012, Tomasz Rychlicki

Bakoma sp. z o.o. from Warsaw requested the Polish Patent Office to invalidate in part in Classes 29 and 30 the right of protection for the 3D trade mark IR-700040 owned by Compagnie Gervais Danone. Some time ago, Danone sued Bakoma for the trade mark infringement, arguing that Bakoma has used similar product packaging for its line of Frutica yoghurts. Bakoma claimed that the sign in question lacks distinctiveness and it was applied in bad faith, because Danone did not intent to use this trade mark in form it was applied for. Bakoma pointed that Danone also owned registered design for a similar packaging, and the registration of trade mark was intended to extend the protection provided for a design, and it could indicate that Danone wanted to bypass the law.

IR-0700040

Danone argued that Bakoma does not distinguish between the concept of functionality and the technical features that may give the impression that the functionality is a prerequisite to prohibit registration. Patent attorneys representing Danone cited judgments of the CJUE and noted that only forms which are simply based on technical solution are not subject to the trade mark registration, and the sign in question clearly lacks of such solutions. Danone claimed that the package has not technical features because the container does not provide a transfer of filling (from a smaller to a larger compartment), it does not prevent from shedding, and it’s not a compact package. In addition, Danone argued that Bakoma failed to prove that at the time of the trade application on the Polish market, there were similar packaging that would prevent registration of an industrial design (formerly called ornamental designs), which means that the design was new. Danone emphasized that the mark at issue can not be used on to market alone, without any label. The French company also provided evidence that the trade mark is recognized by the consumers. At the time of trade mark application, the sign was present on the market for almost 14 years and it has acquired the secondary meaning. Its use was confirmed in advertisements and price lists.

Bakoma argued that the technical solution solves a problem. In this case, as a result, how to mix one component with another, and how to serve it mixed – a solution to this problem is to move the component. These functional features are technical. Such example was even displayed in the commercial movie during the hearing. Bakoma stated that the 3D sign was not distinctive at the date of application, nor it has acquired the secondary meaning, because a 3D form can be a trademark when the average recipient will associate it with the origin of the goods. 3D form can attract the attention of consumers in terms of aesthetics, but it does not mean that it functions as a trade mark. There is no doubt that goods may be aesthetic, may encourage the purchase, but do not work as a sign. In addition, the sign could not acquire secondary meaning because it is used as a technical function, utility function. Bakoma argued that Danone seeks for the right of protection for a sign that was not intended to be used in the applied form. Even, while deciding trademark infringement case, the Appeallate Court ruled that Danone uses in the course of trade a combined mark. Bakoma argued that through the registration of the trade mark Danone wanted to obtain a monopoly on technical solutions with the use of the institution of the right of protection for a trade mark. It is a clear example of bad faith.

On 19 November 2012, the Adjudicative Board of the Polish Patent Office held its hearing, case no. Sp. 500/10. Danone’s representative has requested the PPO to postpone the hearing to allow him to get acquaint with the pleading filed by Bakoma. The PPO acceded, and set a two-week deadline. The PPO obliged both parties to complete all claims in a period of two months, under pain of losing the chance to raise them at a later date. Bakoma also requested the Polish Patent Office to decide on the lapse of the protection for the 3D trade mark IR-700040, however the PPO did not schedule the hearing in this case, no. Sp. 513/08.

Trade mark law, case II GSK 269/10

August 5th, 2011, Tomasz Rychlicki

Polish company Przedsiębiorstwo Produkcji Lodów “KORAL” Józef Koral Spółka jawna from Limanowa, the owner of the word trade mark RED BLUE Z-277694 requested the Polish Patent Office to decide on the invalidation of the right of protection for the word trade mark RED BULL IR-708694 in part for goods in Class 30. KORAL claimed inter alia that the registration of the questioned trade mark was made in violation of Article 6(1) of 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, becasue goods in Class 30 are not subject to the activities of the Red Bull GmbH.

6.
(1) A trademark shall be registrable on behalf of a specific enterprise, but only in respect of goods falling within its field of economic activity.

On 15 December 2008, Red Bull informed the PPO that with effect from 5 December 2008, the Company renounced the protection of the questioned trade mark for goods in class 30 on the Polish territory. The PPO dismissed the request and noted that Red Bull GmbH is a limited liability company under the Austrian law. According to the registry of commercial activity, the company uses the Red Bull brand in the course of trade. In the opinion of the PPO, the Austrian law does not require further specification of the scope of the commercial activity of a company. The PPO has indicated that the minimum condition for which the entrepreneur must meet while applying for a trade mark in order to be grated the exclusive rights to that sign, is the intent of use. Such intent may be interpreted from the list of goods and services covered in the application and registration of the trade mark. KORAL filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 26 October 2009 case file VI SA/Wa 1263/09 dismissed the complaint and KORAL filed a cassation complaint.

The Supreme Administrative Court in its judgment of 13 April 2011 case file II GSK 269/10 dismissed the cassation. The SAC ruled that the Polish legislature adopted the law which implies that a trade mark may be registered if it’s related to the business activity of an entrepreneur and, therefore, that this is not property in itself, which can belong to anyone, but it is an intangible component of the company/enterprise, that serves to distinguis the goods or services from other goods and services of the same kind of other companies. The second of those conditions preclude the possibility of marking other goods than the goods covered by the activities of a company. There is no doubt that the product (or service) that is actually offered in the market by the company, is a commodity, which is the subject of its business. However, a trade mark can (and should) also be used for goods that are not currently offered. Therefore, some problems of interpretation arise in the case of these goods (and services) that can be marketed by the company in the future. The SAC noted that the case law and legal doctrine adopted the view, that commodities which are the subject of a business activity will also be goods or services, what a company intends to introduce to the market in the future. Thus, the need arose to determine the criteria that would allow for the identification of the types of goods that are covered at the time of filing of a trade mark application (and consequently by the registration) by the intention of marking them in the future by that trade mark. Such intention is disclosed by identifying of the company activities in the appropriate register, because it is a public declaration of the entrepreneur on which fields of economic activities it intends to participate, or what kind of goods or services it will be offering on the market.

Trade mark law, case II GSK 368/10

June 10th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated in part the right of protection for 100 R-156995 trade mark that was registered for Agencja Wydawnicza TECHNOPOL Spółka z o.o. for goods in class 16 such as posters, albums, almanacs, stationery, blocks, drawing blocks, brochures, magazines, charade journals, prints, forms, newspapers, calendars, calendars with tear loose, filing cards, cards, card-notices, postcards, comics, books, crossword puzzles, stickers, notepads, covers, stationery, bookmarks, drawing kits, notebooks. Technopol filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in Warsaw in its judgment of 7 December 2009 case file VI SA/Wa 1677/09. Technopol decided to file a cassation complaint.

R-156995

The Supreme Administrative Court in its judgment of 15 March 2011 case file II GSK 368/10 dismissed the complaint in part. The SAC held that the designation, which in fact is the number 100, is a highly informative sign for magazines and journals containing charades, and, as such may not be the monopolized by one entity that would like to use it for marking crosswords magazines. The Court noted also that adding to a trade mark any image does not yet give the sign a concrete distinctive character.

Trade mark law, case VI SA/Wa 2180/10

April 19th, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 11 March 2011 case file VI SA/Wa 2180/10 ruled that the word-figurative trade mark 60 R-156991 is not sufficiently distinctive in standard business transactions because it does not individualize the goods of the trade mark owner among the goods of the same type that originate from different companies.

R-156991

The Polish Patent Office properly assessed the consumers of goods such as crosswords publications, and considered this groups as very diverse. Its members are people of different ages and different levels of education. There was no reason to believe that such a broadly defined consumer will identify a specific numerical designation with a given publisher, not the number of crosswords included in the publication. This judgment is not final yet.

Trade mark law, case VI SA/Wa 203/10

October 11th, 2010, Tomasz Rychlicki

The Polish company INTERKOBO Sp. z o.o. filed a request for the invalidation of the right of protection for the trade mark kucyk pony R-139097 that was registered for HASBRO POLAND Sp. z o.o. Kucyk means “pony” in Polish language. INTERKOBO argued that it has the legitimate interest in the invalidation proceedings because it is a manufacturer of toys, and it offers products such as toy ponies. In addition, in the cease and desist letter dated on 24 April 2007, HASBRO called INTERKOBO to stop the infringement of the right of protection for trade mark “kucyk pony” R-139097 which consisted of using by the INTERKOBO of “Princes’ s Pony” sign for designation of ponies’ toys. INTERKOBO argued also that HASBRO restricts the freedom of economic activity of its competitors, asking them to stop marketing of toys in the form of a small pony and requesting destruction of such products. By registering of the trade mark in question HASBRO had the intention of its use in isolation from the goods for which it was registered, and the intention of closing the access to the market for its competitors, the more that HASBRO as a professional market player should knew or should have known that the term “kucyk pony” as used for the toys in the form of a pony does not have any sufficient distinctiveness. INTERKOBO stressed that HASBRO Sp. z o.o. is a part of capital group operating on the global toys market, which is the position that allows it to dominate the market for local manufacturers of toys and contrary to the scope of the use made of registration to combat competition, which is contrary to the principles of the social coexistence. HASBRO claimed that its sign is used on the Polish market, on the packaging of “kucyk pony” toys and other materials, since 1998 and is the subject of a number of marketing activities, and the brand “kucyk pony” includes not only toys, but also videos and a monthly magazine for children. HASBRO argued that its trade mark has a strong distinctive character and can be regarded as a reputable one, in relation to the goods it designates it has the so-called primary distinctive character. The Polish Patent Office dismissed the request. INTERKOBO filed a complaint against PPO’s decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 24 June 2010 case file VI SA/Wa 203/10 affirmed this decision and dismissed the case. The VAC held that the trade mark in question is is a fanciful sign and has the primary distinctive character. It is not a generic name of any of the listed goods, and it does not inform about their properties. Pony (in Polish: kucyk) is the generic name of the horse species while it is not the name of the goods protected by the trade mark, which goods do not have any direct connection with any species of horses.

Trade mark law, case II GSK 626/09

September 6th, 2010, Tomasz Rychlicki

The Swiss company Marquard Media, current publisher of the magazine “Przegląd Sportowy”, which since 1974 always includes a supplement entitled “Skarb Kibica” (in English: Fan’s Treasure), succeeded in registering SKARB KIBICA R-134960 at the Polish Patent Office.

In 2004, Profus Management requested the invalidation of the right of protection for the SKARB KIBICA trade mark. Profus claimed that this sign has informational nature rather than distinctive character. It provided an opinion written by professor Urszula Promińska to support its arguments with this regard. In 1992 Profus Management bought the weekly football magazine “Piłka Nożna” with “Skarb Kibica” column. Marquard Media filed a trade mark infringement suit.

In 2006, the PPO has decided on the invalidation of the right of protection. The Voivodeship Administrative Court in Warsaw in its judgment of 2 October 2006 case file VI SA/WA 791/06 reversed this decision, but only because of deficiencies in the proceedings and send it back to the PPO for reconsideration.

When examining the case after the judgment, the PPO in its decision of 25 February 2008 case file Sp. 213/07 dismissed Profus Management request. The PPO held that the mere use of the sign in question by different entities cannot deprive its distinctiveness. When the case went again in 2009 to the VAC, the owner of “Przegląd Sportowy” and “Skarb Kibica” was Axel Springer Poland. The Voivodeship Administrative Court in Warsaw in its judgment of 27 February 2009 case file VI SA/Wa 2219/08 dismissed Profus complaint. The Supreme Administrative Court in its judgment of 31 August 2010 case file II GSK 626/09 upheld this decision. The SAC held that the mere use of this sign by different publishers at the date of its registration cannot deprive its distinctiveness. The distinctive character of such a sign is examined, of how it was perceived by readers interested in football and sport activities.

Trade mark law, case II GSK 305/06

March 28th, 2008, Tomasz Rychlicki

The Polish Patent Office in its decision of 15 March 2005 case Sp. 24/01 invalidated the trade mark R-116334 that was registered for Agencja Wydawnicza TECHNOPOL Spółka z o.o. for goods in Class 16 such as magazines and books with crosswords and charades, brochures, exercise books. TECHNOPOL filed a complaint against this decision, but it was dismissed by the Voivodeship Administrative Court in its judgment of 18 May 2006 case file VI SA/Wa 1684/05. TECHNOPOL decided to file a cassation complaint.

R-116334

The Supreme Administrative Court in its judgment of 29 March 2007 case file II GSK 305/06 held that even if the provisions of Article 4(2) of 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, allow for the protection of trade mark consisting of the compositions or combinations of colors, it does not mean that each of such compositions is capable of being registered.

4(1) For the purposes of this Law, a trademark shall be any sign capable of distinguishing the goods or services of a given enterprise from similar goods or services of another enterprise.
(2) The following, in particular, are considered as trademarks: words, designs, ornaments, combinations of colors, plastic forms, melodies or other acoustic signals, and a combination of such elements.

The Court ruled that this sign lacks abstract distinctiveness, because the average recipient is not able to remember both the composition of colors and each color of the edges of sheets i.e. a color scheme, or colored side, due to the commonly used by publishers of books and journals practice of coloring sheets of the books and other periodicals. The lack of abstract distinctiveness excluded the possibility to examine its concrete distinctiveness. The Court noted also that regulations protecting industrial property should be applied by the Polish Patent Office and courts in such a way that their interpretation is consistent with the goals and content of the Directive 89/104, and the jurisdiction of the Court of Justice. This follows from the principle of pro-European interpretation of national law. Its essence is the interpretation of national law, which will achieve an outcome that is consistent with the content or purpose of the provision of Community law. National courts must interpret national law in conformity with Community law “as far as possible”. It means that pro-European interpretation of national law is fully admissible if national legislation does not specify clearly an issue, or if the provisions of Community law are more detailed than these afforded in domestic law.

Trade mark law, case VI SA/Wa 693/06

January 24th, 2007, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 3 November 2006 case file VI SA/Wa 693/06 held that a dimensional trade mark (3D), which is an exact reproduction of the packaging is not distinctive, and thus cannot be registered.

IR-0405177

This case concerned the refusal to grant the right of protection for International trade mark IR-405177 owned by Ferrero, S.p. A. from Alba.

Trade mark law, case VI SA/Wa 1705/06

October 17th, 2006, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 14 November 2006 case file VI SA/Wa 1705/06, published in LEX under the no. 299601, by referring directly to the wording of the IPL, ruled that the exemption from the registration of trade marks classified as descriptive does not mean that every trade mark that consist of elements that describe the product, its qualities or characteristics, is deprived the registrability. Only signs which may serve in trade to provide information about the characteristics of the goods should be recognized as descriptive trade marks under the TMA.

R-155237

This case concerned the request for the invalidation of the right of protection for word-figurative trade mark “CIEPŁA PODŁOGA” R-155237 registered for goods in Class 11 such as heating mats, owned by “ELEKTRA” Włodzimierz Nyc, Witold Nyc Spółka Jawna.

Trade mark law, case II GSK 92/05

November 11th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 29 June 2005 case file II GSK 92/05 held that a sign that is depicted as confectionery, or a cookie called delicja (Jaffa cake) cannot be registered as a trade mark, because it only shows and serve as a shape of a product. The Polish Patent Office has granted the right of protection for the 3D trade mark R-116211. The applied sign was described as a flat round cookie, the lower portion being the disc with rounded edges is colored in pale yellow, the top of the cake has circular elevations of smaller diameter, the surface of which is convex, rectangular grid, and the entire upper surface of the cake is in dark chocolate brown. Five different Polish companies have requested the PPO to invalidate the right of protection, and argued that it was applied contrary to Polish and European regulations. The PPO invalidated the right in question. The owner, LU POLSKA Spółka Akcyjna, filed a complaint against this decision. The Voivodeship Administratie Court in its judgment of 18 October 2004 case file II SA 3199/03 dismissed it. LU POLSKA filed a cassation complaint.

The Supreme Administrative Court ruled that the ability of distinguishing the goods or services (the so-called “abstract ability to distinguish” goods or services) must be distinguished from the “sufficient distinctiveness” of an applied trade mark. Only after finding that a given sign is capable to serve as a trademark, its distinctive ability in concreto is subject to examination. A sign cannot be identified with the product itself. The Court ruled that the interpretation of Articles 4 and 7 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, should be made in accordance with the provisions of Article 3(1)(e) of the First Directive 89/104. Accordingly, signs which consist exclusively of the shape which results from the nature of the goods themselves shall not be registered or if registered shall be liable to be declared invalid. This regulation should be interpreted in the manner that signs which consist exclusively of the shape of goods shall not be registered if it is proven that basic, functional features of such shape are assigned only to technical characteristics.

R-116211

The contradictions with the law or rules of social coexistence, that are the condition of inadmissibility to register a trade mark, must not only connect directly to the sign itself, but also to the circumstances surrounding the registration of the mark if they contain elements contrary to law or the rules of social coexistence. In addition, the violation of other laws than those included in the TMA should be considered as the registration contrary to law. The registration of a 3D trade mark whose sole purpose is to monopolize the market of a given product and thus deprive the competitors of the freedom of establishment as regards the possibility of further production of the same product, is violation of the provisions of the law.

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.

Trade mark law, VI SA/Wa 1482/04

August 11th, 2005, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 3 August 2005, case file VI SA/Wa 1482/04 held that a single colour is not able by its nature to independently distinguish goods of individual entrepreneurs. But, even if a single colour is devoid of any distinctive character according to article 3(1)(b) of the First Directive, it may acquire such a distinctive character in relation to goods by use of such coulour. This factor should be considered when assessing the registerability of a single coulour as a trademark.

Z-206238

This judgment concerned separate Color RED Pantone 485 C applied for by Firma Cukiernicza SOLIDARNOŚĆ – rok założenia 1952 Spółka z o. o. from Lublin for goods in class 30 such as confectionery, chocolate confectionery, sweets.

Trade mark law, case GSK 864/04

April 11th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 23 November 2004 case file GSK 864/04 held that according to Article 4(1) and Article 7(1) of 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, an undefined trademark, i.e. a trade mark which is not represented in one form, does not possess any sufficient ability to distinguish goods. This judgment concerned a trade mark that was filled according to the Madrid system of international registration of marks.

IR-667827

The trade mark IR-667827 owned by FERRERO S.p.A. is represented in the double color composition (the lower part is in white and the top part is in orange). The Court ruled that there was no justification for the argument that the composition or combination of colors, that could serve as a trade mark, has to meet other and additional requirements, such as novelty and originality of form or compositions of colors, i.e. it has to be a manifestation of creativity. However, an undefined sign, that does not exist in one and the same form, is not able to create and capture the consumer associations as to the origin of goods from one and the same entrepreneur. So, such a sign is not sufficiently distinctive. A simple composition of two or more colors, without shape or contour, or the combination of these colors in every possible configuration, does not meet the accuracy and uniformity that is required to perform the function of the trade mark in order to be registered. Such inaccurate representation of the sign which is the combination of colors presented in an abstract (no contours) may lead to many different variations, which in turn, will not allow the consumer to perceive and remember this sign, and thus re-purchase the goods originating from the same company.