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Archive for: Art. 9(1)(i) TMA

Trade mark law, case II GSK 746/10

September 2nd, 2011, Tomasz Rychlicki

This is the continuation of the story described in “Trade mark law, case VI SA/Wa 1988/09“. Kraft Foods Polska filed a cassation complaint.

R-91506

The Supreme Administrative Court in its judgment of 12 July 2011 case file II GSK 746/10 dismissed the complaint and held that the reputation of the trade mark and homogenity goods bearing the signs at issue – even if they could be taken into account while assessing the likelihood of confusion – cannot challenge the established view that there is the lack of similarity between these trade marks. The Court decided that trade marks that were subject to the opposition proceedings do not contain a common element being the same surname, because the meaning of the POLO word in these trade marks is different.

Trade mark law, case II GSK 206/06

April 25th, 2011, Tomasz Rychlicki

On 16 July 1996, the Polish Patent Office refused to grant the right of protection for the figurative trade mark DVORAK IR-639197. On 27 August 2003, the PPO upheld its decision and ruled that the sign in question is similar to two figurative trade marks R-79913 and R-80064 that were registered with an earlier priority for POLMOS S.A., and it violates the rights of third party, by using elements that are incorporated in earlier registered industrial designs Rp-1 and Rp-2 that are also owned by POLMOS.

IR-0639197

The Supreme Administrative Court in its judgment of 18 January 2007 case file II GSK 206/06 held that the registration of a trade mark whose description largely overlaps with the description of the industrial design that was previously registered to another company, without its permission, is a violation of the rights from the registration of industrial designs and meet the grounds for refusal of registration of the mark because it infringes the personal or economic rights of third parties. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case II GSK 259/10

April 7th, 2011, Tomasz Rychlicki

Mariusz Lech Przedsiebiorstwo Produkcyjno-Handlowo-Uslugowe LECH-POL from Lask requested the Polish Patent Office to invalidate the right of protection for the word trade mark “lech wódka” R-145285 registered for Fabryka Wódek POLMOS ŁAŃCUT S.A. for goods in class 33 such as alcoholic beverages: vodka. Mariusz Lech argued that the questioned trade mark is confusingly similar to his word-figurative trade mark LECH-POL R-132854 and the word trade mark “mariusz lech” R-113305, both registered for good in class 33 such as alcoholic beverages.

The PPO dismissed the request and noted that Mr Lech’s trade mark were not genuinely used for all goods. In 2007 the PPO decided on the lapse of the protection rights for both trade marks in all goods except wines, this cases went through all instances. See “Trade mark law, case II GSK 708/08“. Therefore, the compared goods are different due to existing specialization in the alcohol industry and the awareness of that specialization among potential customers is also important, because the average buyer is aware that the vodka manufacturer does not produce wine, and vice versa. These trade marks may exist on the market without collision. Mariusz Lech filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 16 October 2009 case file VI SA/Wa 1050/09. LECH-POL decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 10 February 2011 case file II GSK 259/10 dismissed it. The SAC ruled that the conditions of production of wines and vodka are different. The packagings and sealing of such goods differs and there are different conditions of sale of such products. Vodka in not sold in the wineries, and in case when both types of goods are in a shop, (usually displayed on different shelves in malls), their location is clearly separable. The development of shopping centers and various self-service shops of retail chains, makes the criterion of sales conditions less important when it is used for assessing the similarity of the goods. The Court noted that vodka and wine, because of varying alcohol content, must be treated as different types of alcoholic beverages, which is also reflected in the provisions the Polish Act on Upbringing in Sobriety and Counteracting Alcoholism of 26 October 1982 and the permits that are granted under this Act for trade and service of alcoholic beverages are issued separately for each kind of beverage from a separate pool of permissions. The Court also ruled that the incidental possibility that the producer of wines and spirits is the same entity does not lead to the conclusion that these beverages are of one type.

Trade mark law, case VI SA/Wa 650/10

March 1st, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 Demceber 2010 case file VI SA/Wa 650/10 acknowledged the rule that the infringement of the company name as a condition to invalidate the registration of a trade mark under the old Polish Trade Mark law is not forejudged by registration of an identical or similar mark by another company. The VAC repeated that the exclusive rights to the company name are not an absolute. The limits have the territorial and objective nature and they concern the actual actvity of an entity that is using the name in question. Only within these limits the collision between identical or similar company name and trademark may occur. So if the scope of business activities of an entitled to the company name and the holder of the registration of the trade mark differs, there is no risk of consumers confusion as to the identity of companies or for example, a proprietor of the later trade mark is not using the reputation associated with an earlier identical or similar company name, it’s hard to say that there is the collision of these two rights, and consequently an infringement of an earlier right to the company name. This judgment is not final yet.

Trade mark law, case VI SA/Wa 785/10

January 4th, 2011, Tomasz Rychlicki

Unilever N.V., the owner of SOLERO IR-0622723 and word-figurative SOLERO IR-0628636 trade marks requested the Polish Patent Office to invalidate the right of protection for SOLEY R-129356 trade mark owned by Maria Ziębińska, Stanisław Ziębiński “ICE MASTRY” sp. j. from Czaniec. Unilever claimed that the questioned sign is similar to its earlier registered well-known trade marks and that the Polish company acted in bad faith while applying for the right of protection because in 1997-2001, Unilever and ICE MASTRY were involved in two civil suits (case files V GC 252/97 and V GC 217/98) that have ended in a settlement in which the Polish company Poland commited to discontinue use of the signs SOLER, Soller and SOLLEI. The PPO invalidated the right of protection. ICE MASTRY filed a complaint against this decision.

IR-0628636

The Voivodeship Administrative Court in Warsaw in its judgment of 4 October 2010 case file VI SA/Wa 785/10 held that the date of application for registration under Article 11 of the TMA (these provisions still apply in cases where the trade mark has been applied for registration when the old Act was in force) determines the priority of the right of protection associated with the applied sign (prior tempore potior jure). Thus, by this date all subjective and objective issues related to the right applied for protection must also be assessed, in particular,and whether the applicant has the right to the sign.

Article 11.
Subject to Article 12, priority for obtaining the right deriving from registration of a trademark shall be determined on the basis of its regular filing for registration with the Patent Office.

The Court also noted that the TMA, as well as the Industrial Property Law does not include a provision that would regulate differently the question of the trade mark application, in relation to its subjective and objective elements and that would take into account as authoritative another, later, point in time. Moreover,the adoption at of a later date to assess the qualifications of the applicant, not only would provide an option for revalidation of trade mark applications that were filed in contradiction with the law, or principles of social coexistence (in bad faith), but may also violate other laws. The filing date of an application for the registration of a trade mark should be taken into account when assessing whether the applicant has acted in bad faith, not the date of trade mark registration. The judgment is not final yet.

Trade mark law, case II GSK 619/09

December 24th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 4 November 2010 case file II GSK 619/09 ruled that weak distinctive characteristics of trade marks at issue, obviously did not justify, the infringement of these rights. Nevertheless, the proprietor of the mark mark with weak distinctive characteristics, and this is due to the reduction in this sign to presence of informational elements, has to tolerate the existence of a competitive trade marks, containing similar elements that have informational nature. The limit of that tolerance is the similarity of opposing signs, if it could mislead the purchaser of the goods.

Trade mark law, case VI SA/Wa 601/10

December 21st, 2010, Tomasz Rychlicki

The Polish company Producent Okien i Drzwi z PVC “OKLAND” Joanna Wilk i Wojciech Wilk Spółka Jawna from Kostomłoty Pierwsze filed a request for invalidation of the right of protection for a word-figurative trade mark Okland R-154904 owned by OKLAND Spółka z o.o. from Rokitki, in regard to the goods in Class 19, wooden windows. The company from Kostomłoty Pierwsze claimed it operates since 1 June 1997. Its business activities include the production of windows and doors of PVC in the four southern voivodeships. The company argued that the simultaneous use of the OKLAND sign in its company name and as a trade mark registered for a different entrepreneur may increase the risk of misleading the public, which includes in particular the risk of association between signs. The Polish Patent Office invalidated the right of protection. Okland from Rokitki filed a complaint against this decision.

R-154904

The Voivodeship Administrative Court in Warsaw in its judgment of 31 May 2010 case file VI SA/Wa 601/10 held that the registration of a trade mark that is identical or similar to a company name of another entrepreneur does not determine, however the infringement of the rights to the company name (the firm). The exclusive rights to the company name are not absolute. The limits of these rights are set by the coverage (territorial and objective) of the actual activity of a given company. The collision between identical or similar signs i.e. a company name and a trademark, may occur only within these limits. The judgment is not yet final.

Trade mark law, case VI SA/Wa 2038/09

July 14th, 2010, Tomasz Rychlicki

Polish company Przedsiębiorstwo POLMOS Białystok Spółka Akcyjna, the owner of word-figurative and 3D trade mark “POLMOS ŻUBRÓWKA BISON BRAND VODKA” R-62081 and 3D trade mark R-85811, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection to word-figurative and 3D trade mark “VODKA Herbe de Pologne” R-155144, registered for BELVEDERE S.A.

R-62081

POLMOS argued, inter alia, that there is a significant visual similarity between trade marks at issue. Its bottle has a blade of grass, which is very dominant and attracts the attention of the average consumer. Such assessment cannot be undermined by the fact that there are few blades of grass in the bottle representing the questioned trade mark. POLMOS argued that the registration of “VODKA Herbe de Pologne” threatens the reputation of its trade marks, and emphasized the role of grass in the bottle as a motif indicating the origin of the product. POLMOS added that the purpose of BELVEDERE’s actions was the parasitic use of the reputation of earlier trade marks owned by POLMOS.

In the opinion of the Polish Patent Office (PPO) these trade marks were visually dissimilar because of different bottle shape, color, the presence of a label in the contested mark and the lack of labels in the opposed one, number and appearance of components in liquid. These signs were incomparable in the phonetic/aural aspect, so they were also dissimilar, as the opposed trade mark lacks lettering. In the conceptual aspect the questioned trade mark contains a bunch of herbs inside the bottle and the word “herbe” which indicates that the vodka is herbal, and the opposed sign, contains a longitudinal component, but this element in general is not like weed-grass. Consequently, due to lack of similarity the PPO held that the opposition is unfounded. POLMOS filed a complaint.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 April 2010 case file VI SA/Wa 2038/09 held that in the case of trade mark reputation, a sign has to be examined as a whole, as the right of protection was granted for such a designation. It can not be allowed to examine every element of the sign separately, in isolation from the whole trade mark.

R-155144

The Court also ruled that the similarity of signs is a prerequisite for examining whether in a particular situation there was infringement of the reputation of an earlier mark. See “Trade mark law, case II GSK 207/07“. The VAC held that the absence of the similarity of signs, which also includes the possibility of their association, is the argument that the presence on the market of goods bearing the sign at issue will not affect in any way the alleged reputation and distinctive character of POLMOS’ trade marks.

Trade mark law, case II GSK 344/09

April 20th, 2010, Tomasz Rychlicki

This is the continuation of the history described in the post entitled “Trade mark law, case VI SA/Wa 1388/07“.

The Polish Patent Office (PPO) and the Voivodeship Administrative Court (VAC) ruled that EAU DE TOKYO trade mark is totally dissimilar to KENZO or to L’eau par Kenzo trade marks. The mere fact of the use of the word eau did not predict similarity of questioned signs, because the word as part of the expression of eau de toilette, in relation to cosmetics does not have any distinctive character. The PPO and the VAC did not agree with arguments that MGT Parfum Création wanted to use the reputation that was understood as the good name of KENZO.

According to the PPO and the VAC, the use of packaging that is confusingly similar to the packaging used by KENZO could only give rise to claims of delict of unfair competition which is decided in the civil proceedings. The very fact of any dishonest conduct of the holder of the disputed registration cannot be interpreted that the trade mark application has been made in bad faith. Even if the court agreed that events which took place in 2006, i.e. MGT actions based on producing EAU DE TOKYO packaging that looked alike L’eau par Kenzo perfumes, and advertising of its products with “the type of Kenzo perfume” slogan, could raise doubts about compliance of such actions with the rules of fair competition, but these were not sufficient facts to consider that in 2000, MGT had the intention to act dishonestly – in bad faith.

The Supreme Administrative Court (SAC) in a judgment of 26 January 2010,case file II GSK 344/09, ruled that the PPO has properly established and the VAC correctly agreed to facts, that at the time of application for the protection right for EAU DE TOKYO R-153843 trade mark, the bad faith could not be attributed to MGT Parfum Création.

Trade mark law, case VI SA/Wa 1988/09

April 15th, 2010, Tomasz Rychlicki

Kraft Foods Polska Spółka Akcyjna from Warsaw, the owner of PRINCE POLO R-148617 trade mark gave a reasoned notice of opposition to a final decision of the Patent Office on the grant of a a right of protection to MARCO POLO R-174796 trade mark that was applied for by Zakłady Przemysłu Cukierniczego MIESZKO S.A. for goods in class 30.

Kraft Foods claimed that there is a risk of confusion between these trade marks, which is the result of the similarity of the compared signs and the identity of the goods. Kraft also submitted evidence to prove the reputation of PRINCE POLO trade mark. Mieszko argued that the signs are dissimilar because the graphic/figurative element of these marks is essential, and verbal elements are blurred or faint and even minor. Mieszko also found arguments of POLO PRINCE reputation very questionable, because even Kraft indicated that the goods for which its trade marks are registered marks are cheap and directed for the mass consumer.

The Polish Patent Office (PPO) In a decision of 23 April 2009, ruled that the same element POLO does not determine the similarity between both signs, because the differences occurring in the conceptual aspect rule out the risk of consumer confusion as to the origin of goods. The PPO held that contrary to the Kraft’s arguments, Marco Polo sign will primarily be associated by purchasers of goods with a famous explorer, because it is simply his name. However, PRINCE POLO sign, regardless of how it can be translated into Polish, is not used to identify a specific person and it is not a proper name. Despite the recognition of Kraft’s trade marks on the Polish market, the average consumer will associate MARCO POLO in the first place with a person of a traveler rather than as Kraft claimed with its PRINCE POLO trade marks. Therefore, the PPO rejected the notice of opposition. Kraft filed a complaint to the administrative court.

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 11 February 2010, case file VI SA/Wa 1988/09, agreed with the PPO’s assessment of the similarity and ruled that since the signs are not similar then the discussion about using someone else’s reputation is not justified. Dissimilar signs cannot cause association in consumer’s mind, so there can be no question of imitation, and conscious deriving of benefits from someone else’s reputation.

Kraft filed a cassation complaint to the Supreme Administrative Court. See “Trade mark law, case II GSK 746/10“.

Trade mark law, case VI SA/Wa 1074/06

March 16th, 2010, Tomasz Rychlicki

I was so fascinated with the use of the law of prägnanz by the Polish court that I decided to look for something more. I was very surprised with my discovery.

On 24 October 2004, Diesel Company, seated in Molvena, Italy filed a notice of opposition to a final decision of the Patent Office on the grant of a right of protection to DSL R-148054 trade mark. According to Diesel S.p.A., DSL R-148054 trade mark was similar to DIESEL R-73457 and DIESEL IR-608499 trade marks. The Polish Patent Office in a decision of 9 January 2006, no. Sp.88/05, rejected the opposition. Diesel Company filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw. The VAC in judgment of 16 November 2006, case file VI SA/Wa 1074/06, said the following.

It should be noted that one can manipulate the external context, and by influencing the human experience, one can manipulate the internal context. The law of proximity states that elements close to each other compared with other, more distant elements form the figure. The law of similarity based on the law of proximity in relation to similar elements, indicates that human perception can give rise to a new separate figures, and a new association. Next, the law of closure indicates that the perceptual system adds the missing elements and closes the form of incomplete figures. It should be noted that the human being creates the perceived reality based on the interaction of knowledge that flows from the various branches and experience, with received stimuli. So it may be, in this case. Human knowledge derived from other branches of science may “complete” the lack in the designation and close this sign. Thus, the internal context may allow for the law of closure, i.e. for the full reading of the meaning of the word. In turn, the law of symmetry with the use of the simplicity of perception of an object can lead to the fact that elements close to each other, form a mild integrity and the independent shape.

R-148054

In this case, the VAC correctly quoted its source. These are excerpts from A. Falkowski, T. Tyszka Psychologia zachowań konsumenckich, (in English: Psychology of Consumer Behavior), Gdańskie Wydawnictwo Pedagogiczne, pp. 24-26.

Trade mark law, case VI SA/Wa 897/09

October 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 October 2009 VI SA/Wa 897/09 held that the company name (firm) serves as the identification and prominence of the entrepreneur in the legal and economic transactions. It is also a carrier of certain information about the characteristics and qualities of business conducted by such entrepreneur. An unauthorized interference with the function of a company name infringes on the right to the name. The company name, also of the civil partnership, is a personal interests/asset of the company and relates to its identity when it individualize such entrepreneur. The firm/company name is subject to protection of personal rights/intrests under Articles 23 and 24 of the Civil Code, in conjunction with Article 43 ^{10 of the Civil Code.}

R-143502

The Court ruled that the company name (firm) is the absolute personal right, effective erga omnes, and enjoyed by everyone including businesses and individuals that do business in the form of civil partnership. The right to a company name is formed with the entry of the entrepreneur in the business register, and in any event, when the company used for the first time in trade. Entrepreneurs may claim the right to the company name (the firm) after they have been registered in the Register of Entrepreneurs in the National Court Register or in the Economic Activity Records. The disclosure of trade name/company’s name is provided in the registry (National Court Register – Polish public register maintained by the selected regional courts and the Ministry of Justice which includes the register of enterprises). It has a declaratory nature. The Economic Activity Records are maintained by the municipality of the place of residence of the entrepreneur.

The Supreme Administrative Court in its judgment of 15 January 2008 case file II GSK 298/07 held that the right of the company name is infringed if the registration of a trade mark conflicts and interferes with the exercise of the right to company name. See “Trade mark law, II GSK 298/07“. This conflict is based on misleading as to the identity of entities (acting under the company name and using the trade mark) and therefore it may jeopardize the company name (firm). Such conclusions were reached by the Supreme Administrative Court in its judgment of 26 April 2006 case file II GSK 31/06.

This case concerned the invalidation proceedings of word-figurative trade mark PIOR R-143502 owned by Przedsiębiorstwo Usługowo-Handlowo-Reklamowe PRIOR, Rostkowska Janina, Rostkowski Jan, Kuc Małgorzata from Chorzów.

Trade mark and Press law, VI SA/Wa 2135/08

September 9th, 2009, Tomasz Rychlicki

On March 2003 the Polish Patent Office granted the right of protection for the word-figurative trade mark 1000 Jolek R-142003 for Oraczewski Roman Oficyna Wydawnicza PRESS-MEDIA from Mielec for goods such as magazines, brochures, crosswords, periodicals in class 16.

On October 2003, Agencja Wydawnicza TECHNOPOL Spółka z o. o. from Częstochowa filed a notice of opposition to a final decision of the Patent Office on the grant of the right of protection for the 1000 Jolek trade mark. Technopol based its opposition on articles 9(1)(i) and 8(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 later amendments.

(1) Registration of a trade mark for goods of the same kind shall not be permissible where:
i) it resembles a mark registered on behalf of another enterprise to such an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity

(…)

Article 8(1)
A trade mark shall not be registrable if:
i) it is contrary to law or to the principles of social coexistence.

Technopol argued that 1000 Jolek was similar to a series of crosswords periodicals which include magazines marked by a noticeable number in conjunction with the word “panoramic” (in Polish: panoramiczny), i.e. trade marks such as 100 PANORAMICZNYCH R-109471, 200 PANORAMICZNYCH R-105389, or 1000 PANORAM R-126399.

According to Technopol, the disputed trade mark duplicated the distinctive element of Technopol’s marks – the form of a numeric element. In Technopol’s view, if the word “Jolki” is omitted it only remains a white figure on a red background. In this situation, the average recipient will identify this sign with a series of Technopol’s publications which have been known for many years. Technopole emphasized that it was the leader in the market for crossword magazines publishing that started in 1994 by introducing the first issue of crossword magazine 100 PANORAMICZNYCH (100 Panoramic). Then Oraczewski began to compete with Technopole by puting on the market crossword magazines entitled in an identical manner, where the leading element a multiple number of 100 was exposed, and the numbers were connected with the word “panoramic” or “crosswords”. According to Technopol, the success of its titles lay precisely in the simplicity of communicating with its customers; Oraczewski took advantage of Technopol’s success in creating of such excellent titles. Technopol also argued that its signs make the so-called “family”, a series of trade marks used to mark Poland’s most popular series of games magazines, which can be more easily identfied through the common element – the number “100″ or its multiples, which is also perceived by the public as information about the goods originating from the same company.

PRESS-MEDIA argued that the disputed trade mark is descriptive in its phonetic aspect, since the number “1000″ combined with the word “Jolek (which defines the type of crossword) causes the trade mark to lack concrete distinctive character. Crucial for the distinctive character of the disputed trade mark is its graphics consisting of the maroon background, the composition of the number 1000 and “Jolek” which are written in fanciful font. PRESS-MEDIA also argued that digits (numbers) only, as well as numbers with words such as “crosswords”, “panoramic”, “panorama”, “sudoku” are purely informational signs with regard to journals with crosswords and other logical exercises. These signs inform of the quantity and/or types of logical exercises/crosswords available in a magazine/publication. PRESS-MEDIA also mentioned that OHIM has repeatedly refused to grant to Technopol trade mark registrations for numbers as trade marks for goods in class 16. See trade marks such as: 150 CTM 00466549, 250 CTM 004665592, 350 CTM 004665601, 222 CTM 004665618, 333 CTM 004665683, 555 CTM 004665709 and trade marks such as 100 SUDOKU CTM 004635711 and 200 SUDOKU CTM 004635736.

In its decision of April 2009, the PPO rejected Technopol’s oppostion. The company filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw.

The VAC in its judgment of 23 February 2009, case file VI SA/Wa 2135/08 ruled that the protection of a press title which is also a trade mark for a crossword magazine does not exclude the possibility of obtaining the right of protection by another entrepreneur for the press title containing the same elements (numbers), if these signs can be easily distinguished in the trade. The provisions included in article 132(4) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, 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 later amendments, permit a convergence of these elements, which on the press-market are in a common use, which also excludes the possibility of monopolisation of the use of such phrases.

3. The protection of a trade mark which contains the signs referred to in Article 131(2)(ii)-(iv) and the symbols referred to in Article 131(2)(v), or signs which relate to the origin of the goods, shall not prevent a trade mark containing the same elements from being granted a right of protection on behalf of another undertaking for identical or similar goods, provided that the both trade marks remain easily distinguishable in the course of trade.

4. Paragraph (3) shall apply accordingly to press-titles as trade marks that contain words or combinations of words customary used in the press-market.

What is more interesting the Polish court acknowledged that this rule is also reflected in the foreign case-law concerning conflicts of trade marks and press titles and pointed out to two judgments of the German Bundesgerichtshof of 1 March 2001, case act signatures I ZR 211/98 and I ZR 205/98, that concerned TAGESSCHAU and TEGESBILD trade marks and TAGESSCHAU and TAGESREPORT trade marks, (AfP of 2001 r., no 5, pp. 385, 389).

The judgment is not final and a cassation complaint has been filed.

Trade mark law, case VI SA/Wa 1483/08

June 23rd, 2009, Tomasz Rychlicki

On September 2006, the Polish Patent Office issued a decision invalidating the right of protection of the BOSS LIGHTS R-136520 trade mark, owned by Reemtsma Cigarettenfabriken GmbH from Hamburg, Germany. The PPO ruled that the registration of the disputed mark occurred in violation of article 8(2) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Journal of Laws (Dziennik Ustaw) of 1985 No 5, itme 15, with later amendments.

A trade mark shall not be registrable if:
ii) it infringes the personal or economic rights of third parties

It was indisputable for the PPO that BOSS LIGHTS R-136520 consists of the “BOSS” sign, which was written in black, this being the only element of BOSS R-66417 trade mark and the main element of other signs: HUGO BOSS R-66418, BOSS HUGO BOSS IR-584899 and BOSS IR-606620 which are owned by HUGO BOSS Trade Mark Management GmbH & Co. KG from Metzingen, Germany.

Reemtsma filed a complaint before the Voivodeship Administrative Court (VAC) in Warsaw. The court rejected the complaint in its judgment of 4 September 2007, case file VI SA/WA 2195/06. Reemtsma filed a cassation complaint to the Supreme Administrative Court. The SAC agreed with Reemtsma’s arguments that the PPO did not explain the facts accurately and did not thoroughly conside the entire evidence. The case was sent back to the VAC. See “Trade mark law, case II GSK 506/07“

The Voivodeship Administrative Court in its judgment of 6 February 2009, case file VI SA/Wa 1483/08 annulled the contested decision of the PPO and decided that the decision was not subject to execution. The VAC also stressed the fact that it is necessary to distinguish the renown of an entrepreneur – its good reputation and positive image – from the trade mark’s reputation (renown). In the case of the reputation (renown) of a trade mark – the subject of positive perceptions is the mark itself and the goods identified by such mark as originating from a particular business, and the reputation of the entrepreneur is generally positive perceptions and assessments about the business.

The case went back to the PPO. However, the Polish Patent Office in its decision of 15 October 2010 case Sp. 255/09 invalidated the right of protection for the BOSS LIGHTS R-136520 trade mark. This time, the PPO found that the trade mark in question is confusingly similar to BOSS HUGO BOSS IR-584899 and BOSS IR-606620 trade marks, and these findings were justified by the literal interpretation of the provisions of Article 9(1)(iii) of the TMA.

Trade mark law, case II GSK 251/08

January 18th, 2009, Tomasz Rychlicki

The Supreme Administrative court in its judgment of 24 June 2008 case file II GSK 251/08 ruled that due to the fact that the trade mark MILKA that was invoked against the trade mark MIKLA R-148766 registered for goods in Classes 12 and 30, is a word trade mark, its use can manifest itself in a way that was chosen by the owner, which means that the holder may impose it on goods but not in any contradiction of the conditions afforded by the right of protection. The trade mark holder may, therefore, by marking the goods for which the sign received protection, to use a word trade mark by incorporating it in other registered trade mark, or to join it with the elements known and belonging to other sign.