Archive for: Art. 7(1) 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 1563/11

October 30th, 2012, Tomasz Rychlicki

The Voivodeshipp Administrative Court in Warsaw its judgment of 21 December 2010 case file VI SA/Wa 1579/10 dismissed the complaint filed by the Polish company Dimyat Polska Sp. z o.o. against the decisions of the Polish Patent Office on the refusal to grant the right of protection for the word trade mark PLISKA Z-135975 applied for the goods in Class 33 such as alcoholic beverages, wines, liqueurs, cognac, brandy, vodka, spirits. The PPO decided that the applied trade mark is devoid of sufficient distinctive character, because it does not individualise the goods on the market. The sign Pliska has no distinctive graphics, does not have any distinguishing features that would help to identify the manufacturer of the goods. Pliska is the name of the village in Bulgaria, in the Shumen district. It is not a fancy designation, but a sign informing about the geographical origin. The first figurative trade mark Pliska has been applied in the Republic of Poland in 1962 by the Bulgarian company. Since then alcohol products bearing Pliska trade mark have been introduced on different markets, among others, the Polish one. In addition, the PPO noted that the mark applied sign may contain inaccurate information, as it may cause confusion of the average consumer as to the origin of goods. The recipient who are buying alcoholic beverages bearing Pliska sign would believe that they were produced in Bulgaria. The Court agreed with the PPO and supported its view with the arguments included in the judgment of the Court of Justice of the EU of 4 May 1999 in joined cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions.

Dimyat Polska Sp. z o.o. filed a cassation complaint. The company argued inter alia that the decision in this case was issued by a person whose mother in law sat in the panel of the judges in the VAC. At the hearing before the Supreme Administrative Court, the counsel for the PPO acknowledged that the decision of the first instance in the Patent Office was issued by an expert who is daughter in law of one of the judges.

The Supreme Administrative Court in its judgment of 28 September 2012 case file II GSK 1563/11 overturned the judgment of the VAC and sent it back for further reconsideration. The SAC held that despite the merits of the cassation complaint, there was a condition of nullity of the proceedings. The Polish Act on Proceedings Before Administrative Courts states that a judge is excluded in deciding a case in matters that concern his or her relatives in a straight line and in-laws to the second degree. In the present case, the mother-in-law is a first-degree relationship. The institution of exclusion of a judge is a procedural guarantee which consist of the impartiality of the judge that is identified with objectivity of the proceedings. The impartiality of judges is this kind of value for which the protection and execution is particularly important in a democratic state of law. Such defined impartiality should be identified with objectivity that is expressed in the equal treatment of the parties of any proceedings, so that there is no favorable situation for any of them. The court proceedings must be conducted in such a way that there is not even an apparent impression of behavior that would be deemed as disregard of standards of impartiality, being a manifestation of judicial independence.

Trade mark law, case II GSK 615/10

September 7th, 2011, Tomasz Rychlicki

Mr Roman Oraczewski Oficyna Wydawnicza PRESS-MEDIA requested the Polish Patent Office to invalidate the right of protection for the trade mark “Sto Panoramicznych” R-102530 owned by TECHNOPOL Agencja Wydawnicza Spółka z o. o. and registered for goods in Class 16 such as magazines. The PPO invalidated this trade mark and ruled that this designation is descriptive and informative, because it is carrying explicit message on the number and type of crosswords included in each copy of the magazine. TECHNOPOL filed a complaint against this decision, but it was dismissed by the Voivodeship Administrative Court in its judgment of 16 February 2010 case file VI SA/Wa 1862/09. TECHNOPOL decided to file a cassation complaint. The Comapny argued inter alia that its trade mark has acquired secondary meaning because TECHNOPOL also used similar signs, for instance “100 panoramicznych” R-102531, which is a modification of the trade mark “Sto Panoramicznych”.

The Supreme Administrative Court in its judgment of 25 May 2011 case file II GSK 615/10 dismissed the complaint and ruled that the use of a sign in order to prove its secondary meaning, can not be documented by the use of other similar designation that is also a separate, registered trade mark.

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 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 II GSK 67/10

April 14th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for the word-figurative trade mark 1001 R-157046 registered for goods in Class 16 such as posters, albums, almanacs, stationery, blocks, drawing blocks, brochures, magazines, charade magazines, prints, forms, newspapers, calendars, calendars with loose pages, filing cards, cards, card-notices, postcards, comics, books, crossword puzzles, stationery, stickers, notepads, covers, bookmarks, drawing kits, notebooks, and owned by Agencja Wydawnicza TECHNOPOL Spółka z o.o. The PPO ruled that this trade mark lacks distinctiveness. TECHNOPOL filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 18 September 2009 case file VI SA/Wa 1164/09. Technopol filed a cassation complaint.

R-157046

The Supreme Administrative Court in its judgment of 10 February 2011 case file II GSK 67/10 dismissed it and ruled that a trade mark which lacks primary distinctiveness will acquire distinctiveness or secondary meaning through advertising, if it is used for so long that it will be associated not with the original descriptive content, but the source of its origin – a specific goods produced by a particular manufacturer. The practice of different publishers who used different numbers and numerals in tiles of magazines did not allow for 1001 to acquire secondary meaning.

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 VI SA/Wa 1486/08

June 17th, 2009, Tomasz Rychlicki

On 17 February 2005, Société des Produits Nestlé S.A. from Vevey applied to the Polish Patent Office to register the word-figurative trade mark Frappé Z-291280 for goods in class 30. On August 2005 Nestlé filed a request for invalidation of the right of protection of the FRAPPE R-13842 trade mark, registered for goods in class 30 and 32 owned by Polish company “MASPEX” Spólka z o.o. form Wadowice. Nestlé based its request on provisions of Article 7(2) and Article 8(3) 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.

(2) A sign shall not possess sufficient distinctiveness if it simply constitutes the 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

Article 8(3)
A trade mark shall not be registrable if:
iii) it contains incorrect statements;

Nestlé argued that the word “frappe” is a generic term, widely used in trade, as a sign for chilled coffee beverages. The company based its legitimate interest to have standing in proceedings before the Polish Patent Office on the principle of freedom of access to the indications that have descriptive meaning. In addition, Nestlé informed the PPO that it had sent a warning letter to Maspex because the Polish company had introduced to the market a product with similar name. In Nestlé’s opinion the exclusive right granted to Maspex to mark its products with the word “frappe” was a “unlawful constitutional restriction”. After the hearings and careful analysis of the evidence provided by both parties, the PPO found that the word FRAPPE (even being foreign word) was a term used widely to describe the properties of a beverage (cold, frozen, with ice cubes), especially of coffee, or to determine the type of coffee and it could not serve as sign capable of distinguishing goods of one entrepreneur from goods of another entrepreneur in normal market conditions. The PPO also shared Nestlé’s position based on the article 8(3) of the TMA that the wide range of names of goods covered in the registration of the contested trade mark are not frappe. Maspex filed a complaint.

The Voivodeship Administrative Cout in Warsaw in its judgment of 12 October 2008 case file VI SA/Wa 1486/08 fully agreed with the PPO’s decision and dismissed the complaint.

Trade mark law, case II GSK 210/06

December 29th, 2006, Tomasz Rychlicki

On 11 July 2000, the Polish Patent Office has granted the right of protection to Zakłady Farmaceutyczne Polfa-Łódź Spółka Akcyjna for word trade mark “calcium c” R-122184 for goods in Class 5 such as pharmaceutical products. On 25 May 2001, the PPO received a requested for the invalidation of “Calcium C” R-122184 trade mark. The applicant was arguing that the questioned sign does not have a distinctive character. According to the applicant, the term “calcium” and “c” represent information about the properties and composition of the product bearing the mark.

The PPO in its decision of 11 February 2005, invalidated the right of protection for “Calcium C” R-122184. The PPO claimed that the word of calcium derived from the Latin and has no distinctive character, i.e. it is an informational sign, which should be available to all entrpretanours performing economic activity. While referring to the possibility of acquisition of secondary meaning the PPO held that the owner did not provide any evidence on this circumstance. The PPO considered that the mere fact that the company made a substantial investments in product advertising, or show significant sales, does not constitute itself a secondary meaning. Polfa-Łódź filed a complaint against this decision

The Voivodeship Administrative Court in its judgment of 20 February 2006 case file VI SA/Wa 1730/05 upheld the decision of the PPO. The VAC agreed that “Calcium C” does not have distinctive character. The Court stated that the sign is devoid of any fanciful elements, purely informational – indicating that the product is a calcium with vitamin C. The VAC ruled that in the interest of manufacturers of the pharmaceutical products is the exclusion of such signs from the registration, otherwise one individual entrepreneur could monopolize the use of these signs and that would lead to serious and unjustified restrictions on the activities of other entrepreneurs. Polfa-Łódź filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 December 2006 case file II GSK 210/06 found the appeal well-founded. The SAC held that there was a breach of procedrual provisions because the VAC did not explain and did not consider the impact on the outcome of the case of studies of public opinion, indicating the market share of the disputed product labeled with “calcium c” trade mark and the size of the expenditures on the promotion and marketing. The VAC restricted itself to general statements. It was assumed that for obtaining a secondary meaning the products labeled with “calcium c” must be marketed and available to buyers (the actual use of the trade mark). There was no doubt that this condition for the product bearing “Calcium C” trade mark has been met. However, the SAC noted that is has to be remembered that a trade mark acquires distinctive character as a result of its use only when a sign is able to identify the goods as originating from a particular entrepreneur. Undoubtedly for the SAC the facts in this case were not examined in detail and exhaustive.The Court ruled that the administrative proceedings that concerns the invalidation of the right of protection does not exclude the duty of the administrative body (the PPO) to take all necessary steps to clarify the facts of a case and to resolve it and to comprehensively collect and examine all evidential material, although the burden of proof rests on the one who has the legal interest.

In the legal literature and case-law, it is considered that the typical descriptive signs are in fact components of the goods, even if the indication is only a basic (essential) component, for example, “sand” for the cosmetic agent, which is an essential component. The Court cited W. Włodarczyk, The distinctive ability of a trade mark, Lublin 2001, pp. 199-200. The informational character of a trade mark is not changed when someone is using a sign from foreign language, even in case of terms that come from a dead language (e.g. Latin), when it concerns the professional, or a part of the general Polish vocabulary. The Court concluded that in any case, it would not have been justified to say that the fact that a sign contains information about the composition of a product, a limine precludes its recognition as a fanciful and bars the opportunity to register it as a trade mark, especially since it is possible to acquire secondary meaning.

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 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 VI SA/Wa 1705/05

March 11th, 2006, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 2 March 2006, case file VI SA/Wa 1705/05 decided on trade dress and 3D trade mark TERRAVITA R-142204 owned by Terravita Holding Establishment. The Court ruled that according to the provisions of Article 30 of the Act on 31 January 1985 on Trade marks (Journal of Laws No 5, item 17 with subsequent amendments), a legal interest to demand the invalidation of a trademark registration is afforded to an entity which derives such right from a competence to fill for trade mark registration, use of a trade mark, or to demand the invalidation of a trade mark registration for the sake of the collision with its own rights.

R-142204

The Court also noted that there is a presumption of good faith and bad faith, and it has to be proven. There is an assumption that someone is acting in bad faith if he or she has the awareness of discrepancy of the situation with the law or as a result of his or her negligence in knowledge about the legal situation. In accordance with the well established doctrine, practice and case law, a trade mark according to Article 7 and Article 9(1) pt 1 and 2 of the TMA, should be examined as a whole. It is not allowed to test only one element of the complex sign, for instance the figurative element, without taking into the consideration of the word elements of the complex sign, or doing it insufficiently. Therefore, if the Polish Patent Office examines individual elements of a sign, it should in next, put them together and draw the final conclusions. See also “Trade mark law, case II GSK 247/06“.

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, case III RN 50/96

October 11th, 2005, Tomasz Rychlicki

The Supreme Court in its judgment of 10 December 1996, case file III RN 50/96 held that while assessing whether the sign has the distinctive character one should take into the account the economic interests of all market participants, which is characterized by free access to all signs that inform about name or characteristics of goods or services. The Court simply ruled that purely informational signs may not serve as trademarks. This case concerned 100 PANORAMICZNYCH R-102531 trade mark owned by TECHNOPOL Agencja Wydawnicza Sp. z o. o.

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 II SA 3446/01

August 10th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 14 December 2001, case file II SA 3446/01 ruled that the English word “heritage” is not a generic term for the services it was registered for, nor does it inform about its properties, quality or usefulness. Therefore “heritage” word can be used as a trade mark.

A quick note. The judgments of the Court of Justice of the EC in case C-3/03 P, Matratzen Concord GmbH vs. Office for Harmonisation in the Internal Market (Trade Marks and Designs), [2004] E.C.R. I-3657 and C-421/04, Matratzen Concord AG vs. Hukla Germany SA, [2006] E.C.R. I-2303, have been issued couple of years later.

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.