Archive for: Art. 8(2) TMA

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.

Trade mark law, case V CK 280/04

November 23rd, 2005, Tomasz Rychlicki

The Supreme Court in its judgment of 17 June 2004 case file V CK 280/04 held that the owner of rights listed in Article 8(2) of the TMA can claim, with reference to the normative basis of these rights, for their protection, to prohibit the activities covered by the exclusive right, arising from the decision to register a trade mark, which violate these laws, without first having to invalidate the registration of the trade mark.

Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;

The Court ruled that legal protection resulting from registration of the trade mark is only formal and does not constitute an obstacle to a prohibition of infringement of rights of a particular entity. The court is not bound by a final decision of the Polish Patent Office on the registration of the trade mark when it comes to assessing the facts underlying the judgment that was rendered in civil proceedings.

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 and personal rights law, case II SA 3390/01

May 12th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 10 January 2002, case file II SA 3390/01 held that it is the established rule in the legal doctrine and case law, that the registration of a trade mark which is identical to a company name of other entrepreneur and that was used by this company prior the registration of a questioned trade mark, affects the personal interests of this company. The Court ruled that the general impression given by the sign and its dominant element should be taken into account while assessing the similarity of the distinctive signs. This case concerned the invalidation proceedings of Pebex R-112104 trade mark.

Trade mark law, case II SA 1867/02

March 10th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 12 March 2003, case file II SA 1867/02, held that it’s in accordance with the general rules, that in the event of a collision between company name (the firm) and trade mark that has been registered with the “later precedence”, the priority shall be given to the right that existed earlier.

Trade mark law, case II SA 2914/01

January 6th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 28 February 2002, case file II SA 2914/01 published in Monitor Prawniczy 2002/7/291 held that Article 8 of the Convention does not constitute an independent basis for the protection of the trade name of the entrepreneur, because it does not specify conditions for such protection and does not indicate what claims should be used in the case of infringement of the rights to the company name. However, this affect the domestic law.


This case concerned trade mark invalidation proceedings of ROLEX R-107547 trade mark owned by Woźniak Krzysztof ROLEX Przedsiębiorstwo Produkcyjno Handlowo Usługowe. The proceedings were started by ROLEX SA company who owns ROLEX R-64281 trade mark.