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

Trade mark law, case II GSK 185/08

June 23rd, 2008, Tomasz Rychlicki

Przedsiebiorstwo Przemyslu Spirytusowego Polmos in Warszawa objected to the trade mark application for SPIRYTUS REKTYFIKOWANY PL 1784, R-134685, filed by POLMOS LANCUT SA. Polmos in Warszawa claimed priority of an earlier trade mark – SPIRYTUS REKTYFIKOWANY, R-63628.

R-63628

SPIRYTUS REKTYFIKOWANY was bought by Polmos in Warsaw during an auction held by the Polish Ministry of the Treasury. All Polmos companies agreed in 1999 that they would not use trade marks owned by others in the Polmos “group”.

The Polish Patent Office (the PPO) decided that the contested mark had no distinctive character and it only indicated a specific kind of alcohol and method of production. Przedsiebiorstwo Przemyslu Spirytusowego Polmos in Warszawa lodged a complaint before the District Administrative Court in Warsaw seeking to annul the PPO’s decision. However, the Court sided with the PPO’s findings and rejected the complaint. The Court held that both signs were word-figurative marks and should be perceived and examined as whole.

R-134685

Polmos in Warszawa filed a cassation complaint before the Supreme Administrative Court in Warsaw. It supported its position with an argument that SPIRYTUS REKTYFIKOWANY acquired secondary meaning and had a good reputation bacause of the use during the course of trade. The Supreme Administrative Court in its judgment of 18 June 2008, case file II GSK 185/08 did not agree with such statements and rejected the complaint. The Court found that Polmos in Warszawa was seeking exclusive rights in the spirytus rektyfikowany sign, which was a purely informative term to be found in Polish dictionaries and official norms.

This case is the leading example of problems with trade mark portfolios of companies that were privatized in Poland after 1990. Polmos was state-owned monopoly, controlling the Polish market of spirits and other alcohols from middle ’20s until 1990, when it was divided and privatized into several independent companies.

Trade mark law, case VI SA/Wa 845/05

June 9th, 2008, Tomasz Rychlicki

Valentino filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection for Valentino R-137628 trade mark that was registered in classes 35 39 for Orzechowski Wiesław Firma ASTRO from Gdynia. Valentino argued that Astro infringed on the principles of social coexistence, as it sought to use the reputation of the trademarks and trade names owned by Valentino. Granting the right of protection, thus placing on the same field of economic activity a very similar trade mark would threaten the interests of Valentino, and it would be also contrary to the institution of a trade mark.

IR-645346

The PPO dismissed the opposition and ruled that Valentino did not prove the reputation of its trade marks and due to the different classes there is no risk of consumers confusion, however the goods and services are complementary. The PPO noted also that the questioned trade mark differs from these owned by Valentino because elements such as V, Val, or Zone are exposed which makes them the dominant elements in these trade marsk, and they attract the attention of the public, turning their attention from the less visible Valentino word. Valentino filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 8 November 2005 case file VI SA/Wa 845/05 overturned the decision and held it unenforceable. The VAC ruled that the most visible element in all trade marks in this case is the word Valentino, and verbal elements have the dominant position. The Court also noted that reputation of a trade mark is not dependent on the borders of individual countries or regions. The PPO should examine the evidence submitted by Valentino and it should assess the impact of the existence of a foreign reputed trade mark for its operation in Poland because Valentino could be uninterested of its expansion into the Polish territory, and in the situation if it were interested it could be overtaken by unauthorized entry. The Court agreed also that there was an infringement of the company name.

Trade mark law, case VI SA/Wa 805/05

June 3rd, 2008, Tomasz Rychlicki

The Voivodeship Court in Warsaw in its judgment of 22 February 2006, case file VI SA/Wa 805/05 held that trade marks that are meant as signs for clothes (among other things for pants) resemble to each other to the extent that it may lead into the confusion of a consumer as regard to origin of goods in the regular course of trade, as defined in the article 9 sec. 1 pt 1 and pt 2 of the Act of 31 January 1985 on Trade marks, Journal of Laws (Dziennik Ustaw) No 5, item 17 with subsequent amendments.

US TM 1139254

Such situation happened because both trade marks include horizontal seams crossing down the pocket which in its shapes reasemble seagull’s (eagle) wings, and where such element is simultaneously predominant for both signs.

Trade mark law, II GSK 298/07

March 19th, 2008, Tomasz Rychlicki

In 2000 the PHU Makroterm K. Wąchała & A. Wąchała applied for the registration of the figurative and word mark MAKROTERM in classes 6, 9, 11 and 42. The Makro Cash and Carry company, who applied for the registration of the figurative and word mark MAKRO in classes 1–45 on 22 March 2000, opposed to the registration. Upon finding the observations groundless, the case was then decided by the Polish Patent Office (PPO).

Makro Cash and Carry claimed that the disputable mark imitated the MAKRO mark, used its renown and infringed the company’s right to a company name. Makroterm in turn said there was no likelihood of confusion since the disputed mark did not use the renown of the MAKRO mark because of the fact that Macro Cash and Carry failed to prove the MAKRO mark had been renowned. The Makroterm representative also said the MAKRO mark had not been universally known.

The PPO overruled MAKRO’s opposition. It decided that in assessing similarity one should not focus solely on one element – the “makro” word. It also said the MAKROTERM mark was one word combining the “makro” and “term” words into an original name that moreover had been put in a colourful design. According to the Office both marks brought about different associations in the minds of the relevant public. It decided that the marks themselves differed and did not examine similarity in goods offered by the companies. The Office also pointed out that the provided advertising materials concerned only the MAKRO CASH AND CARRY mark. With regard to the infringement of the right to a company name it decided the name was a compound one so there could not have been any infringement.

Makro Cash and Carry filed an appeal against the decision of the Polish Patent Office. It read that the Office had not assessed the similarity of goods offered by both companies and with identical goods the criteria for assessing similarity of marks are much stricter. Makro Cash and Carry also said the Polish Patent Office assessed only the differences but it should have assessed similarities.

Makroterm in turn underscored that the universal recognition of the MAKRO sign had not been adequately demonstrated and that the mark had been recognized by a half of the relevant public. It also questioned the research commissioned in 2006 by the MAKRO company.

The Voivodeship Administrative Court (VAC) in Warsaw, in a judgment of 22 March 2007, case file VI SA/Wa 1325/06, rejected the appeal. The Court held that the PPO had already compared the marks with regard to all three planes and decided that the marks bore fundamental differences. It decided that the “makro” word was a common one and had little distinctive value. Apart from that it found the “term” word much more distinctive, which together with colourful design of the MAKROTERM mark made both marks different.

MAKRO filed a cassation appeal to the Supreme Administrative Court (SAC). The Supreme Court in the judgment of 15 January 2008, case file II GSK 298/07 fully agreed with the earlier judgement of the Voivodeship Court and the decision of the Polish Patent Office. It also decided there was no similarity between the marks that would lead to a confusion neither on the phonetic, nor conceptual, nor figurative plane. The mark also had not infringed the appellant’s right to the name of his company.

Trade mark law, VI SA/Wa 1100/07

December 21st, 2007, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in a judgment of 18 December 2007, case file VI SA/Wa 1100/07, rejected McDonald’s Corporation complaint against the Polish Patent Office’s decision and ruled that a Singapore company was allowed to register MacCoffee mark for coffe products. McDonald’s will not be allowed to “monopolize” the Mc-prefix. This judgment should make all trade mark practitioners aware of differences between legal systems. Especially when this Polish case is compared to holding in the case Quality Inns Int’l v McDonald’s Corp., 695 F. Supp. 198 (D. Md. 1988). The Court ruled that Quality International’s use of the name “McSleep” infringed McDonald’s family of marks that are characterized by the use of the prefix “Mc” combined with a generic word.

Trade mark law, case II GSK 207/07

December 4th, 2007, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 21 November 2007, case file II GSK 207/07, held that even if the reputed mark is protected against the use on any goods, if this would bring a user an unfair advantage or it would be detrimental to the distinctive character or the reputation of the trade mark, it does not mean that the both signs at issue shouldn’t be a subject to examination to determine their similarity or lack of it. The case concerned a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection to “dodoni A MOŻE MY JESTEŚMY DLA CIEBIE LEPSI COLA” trade mark R-149636, that was registered for Pepsi Corp. The SAC also ruled that the findings that both trade marks are not similar also implies that there is a lack of association between these trade marks by potential recipients.

Trade mark law, case VI SA/Wa 1470/07

October 30th, 2007, Tomasz Rychlicki

This case concerned the invalidation proceedings of MURBET R-155245 trade mark owned by Przedsiębiorstwo Wielobranżowe MURBET Andrzej Zaborski. The proceedings were initiated by the MURBET Gabrylewicz Spółka Jawna company from Ełk.

The Voivodeship Administrative Court in its judgment of 17 October 2007 case file VI SA/Wa 1470/07 held that the registration of a trade mark which infringes personal or property rights of third parties is unacceptable, and in light of case-law, in case of conflict between the company name (the firm), and a trade mark that registered with the “worse priority”, the priority shall be given to the earlier right. However, the exclusive rights to the company name (the firm) is not absolute. Its limits are set by the territorial and substantive coverage, the actual activity of person using the names. Only within these limits there may be a collision between identical or similar company name (the firm) and trademark.

R-222381

The VAC held that because of the distinct areas of the business activity of the person entitled to the company name and the holder of the right of protection to MURBET R-155245 trade mark, there is no risk of leading their consumers to confusion as to the identity of such business or the owner of the later trade mark. The owner of the questioned trade mark does not use the reputation associated with the earlier (identical or similar ) company name (the firm), then it is difficult to find the collision of these two rights, and consequently a breach of an earlier right to the company name by the registration of the later trade mark. The judgment is not final. See also “Trade mark law, case II GSK 400/08“.

Trade mark law, case II GSK 269/06

October 6th, 2007, Tomasz Rychlicki

By decision of 11 August 2005, the Patent Office refused to grant a right of protection for word-figurative “R-Profit” Z-234207 trade mark applied for by Raiffeisen Bank Polska S.A. for goods in Class 36 such as banking services for small and medium enterprises. The Patent Office concluded after examination proceedings that this sign may not be registered because it is similar to PROFIT R-87400 trade mark, registered for Bank Polska Kasa Opieki SA, with priority of 3 November 1993 for goods in Class 36 such as management of interest bearing money investments in zlotys. The PPO also stated that, in this case, the issue of services could not be challenged, since both signs are designed for the same services to a wide audience, i.e. banking services. The PPO ruled that both signs cannot exist simultaneously in trade without the risk of consumers confusions. In the opinion of the PPO there was no doubt that the trade marks are also similar phonetically and semantically.

Z-234207

The Voivodeship Administrative Court in Warsaw in its judgment of 11 May 2006 case file VI SA/Wa 542/06 dismissed the complaint filed by Raiffeisen Bank Polska S.A. and noted at the beggining that Article 315(1)(3) of the IPL, expresses the principle that the issue of the registrability of signs that were registered or applied for registration before 22 August 2001, is assessed on the basis of existing regulations. therefore the provisions of the Act of 31 January 1985 on trade marks are the basis for assessing the registrability of R-Profit trade mark, because it was applied for registration on 10 April 2001.

Article 315
1. Rights conferred in respect of inventions, utility models, ornamental designs, topographies of integrated circuits, trademarks and rationalisation projects, existing at the time of entry into force of this Law, shall remain effective. To these rights the previous provisions are applicable, unless the provisions of this Part stipulate otherwise.

2. Legal relationships established prior to the entry into force of this Law shall continue to be governed by the previous provisions.

3. Statutory requirements for the grant of a patent, a right of protection or a right in registration shall be assessed under the provisions effective at a date of filing of an application concerning an invention, a utility model, a trademark or topography of an integrated circuit with the Patent Office. However, the provision of Article 37(2) shall apply to patent and utility model applications pending at the date of entry into force of this Law.

In the opinion of the VAC that this case involved the same type of services. The Court agreed with the analysis of the list of services performed by the PPO that there exists homogeneity of services between in both lists of goods. In the opinion of the Court, the PPO has properly analyzed the similarity of “R-Profit” and opposing “Profit” signs. Both signs should be compared in aural conceptual and phonetic aspects, bearing in mind that “R-Profit” is a word-figurative trade mark. According to the VAC, even though this case concenrs word and word-figurative trade marks, one may say that there exists graphic similarity, as “R-Profit” and “Profit” differ only by the letter “R” and the core of the two characters – “Profit” is identical. The VAC ruled that the argument that services in question have different distribution channels does not preclude the likelihood of confusion, because an average consumer may think that the service is derived from an entity that combines the organizational relationship and legal rights with the owner of “Profit” trade mark.

Raiffeisen Bank Polska S.A. filed a cassation complaint. The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 269/06 dissmised the case. The SAC held that the comparison of signs should be based on the general, overall impression, which compared trade marks have on the recipient, and thus if the dominant element in both signs are their common elements, there is a similarity between trade marks that is posing a risk of consumers confusion.

Trade mark law, case II GSK 296/06

September 30th, 2007, Tomasz Rychlicki

By its decision of 15 July 2003, the Polish Patent Office has granted a right of protection for FEMISTEN R-146192 trade mark for goods in Class 5 such as pharmaceuticals, pharmaceutical preparations. On 28 July 2004, the Patent Office received a notice of opposition, filed by Solvay Pharmaceuticals B.V. from Netherlands, and it based its oppsition on FEMOSTON IR-624469 trade mark also registered for goods in Class 5. The Dutch company argued that the FEMISTEN is confusingly similar to FEMOSTON both in the phonetic, and aural aspects, and both signs are meant to designate the same kind of goods. The owner of the registration requested the PPO to dismiss the case.

The PPO in its decision of 16 November 2005 dismissed the application for the invalidation of the right of protection for FEMISTEN trade mark. In support of the decision the PPO stated that in its opinion there is no similarity of the signs and it likely will not mislead consumers as to the origin of goods. Both signs were considered as a whole as fanciful. The component FEMI in FEMISTEN trade mark indicates that the product is designed for women. There was some similarity in structure and wording of these signs (the two characters have the same number of letters and syllables, and the difference comes down to differences of vowels in these assays), but in the assertion of the PPO it would not mislead the recipients as to the origin of the goods from a particular entrepreneur. FEMOSTON is a trade mark meant for designation of pharmaceutical preparations used in hormone therapy, which are bought only on prescription, so these goods are available to the customer through doctors and pharmacists. Products bearing FEMISTEN are the skin-care goods, available without a prescription and not associated with hormone therapy. The buyers of pharmaceutical products are adults, which, thoughtfully make their choice by paying attention.

Solvay filed a complaint. The Voivodeship Administrative Court in Warsaw in its judgment of 25 May 2006, case file VI SA/Wa 537/06 dissmied the complaint and ruled that the collected evidence made it clear, that the proprietor of FEMISTEN trade mark at the moment of filing a request for invalidation did not market the goods covered by the disputed mark, but according to the declaration of the holder, Glaxo intended to bring to the market skin care preparations in the form of ointments and gels available without prescription. The Court considered the findings of the Patent Office in this regard as correct. The legal doctrine and the case law established already the method of examining of the homogenity of goods. It should be assessed according to the type of the goods, purpose of the goods and the conditions of their sale, and the mere fact of belonging to a common class of goods is not a decisive argument for the recognition of the goods as belonging to the same kind. The Court ageed with the comparison of these signs that was made by the PPO and noted that the similarity of signs, as referred to in Article 9(1), point 1 of the TMA, is not an independent category, but it serves a purpose, namely the elimination by refusing to register the mark, which would under normal conditions of economic activity to deceive consumers as to the origin of goods. Evaluation of the similarity of the marks must be made at the same time from the perspective of the average consumer of the goods.

Solvay Pharmaceuticals B.V. Decided to file a cassation complaint. The Supreme Administrative Court i its judgment of 13 March 2007, case file II GSK 295/06 ruled that the issue of similarity of trade marks has both the factual and legal aspects, and that the administrative court can conduct its own assessment of the similarity criteria used by the Polish Patent Office. See “Trade mark law, case file II GSK 36/05“.

The SAC noted that according to settled case-law, the similarity of trade marks are resolved on the basis of risk of confusion as to the origin of goods. And the risk of confusion as to the origin of goods consists of similarity of goods and similarity of signs. See “Trade mark law, case file II SA 2778/01“.

Therefore, an essential element of the facts established for purposes of comparison of trade marks in terms of their similarity is to determine what goods bear these marks. Such a requirement does not occur when the same signs lack of similarities that may lead to a risk of confusion as to the origin of goods. This situation occurs in particular when the word trade marks compared in the visual and aural aspect show significant differences, so that mistakes are impossible for the consumer regardless of the way of purchasing terms and conditions of sale. The SAC noted that for unexplained reasons, it was adopted as the basis for comparisons of goods, by how they will be used, based only on arguments provided by Glaxo, where it was not disputed that when the decision was contested before the VAC, no commodity was marked with the questioned sign. It was also important to consider whether the observed similarity in the spelling of the two signs may lead to the risk of confusion. For these reasons, the SAC reversed the contested judgment and referred the case to the VAC for further re-examination.

Trade mark law, case II GSK 247/06

August 11th, 2007, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 1705/05“. The Supreme Administrative Court in its judgment of 20 February 2007, case file II GSK 247/06, dismissed a cassation complaint brought by the K. Company. This judgment concerned TERRAVITA trade mark R-142204.

R-142204

The Court ruled that it cannot be assumed that in case of word-graphic signs, a word element of such sign has a decisive character because it is easy to remember and to communicate. While assessing the similarity of signs one has to take into the consideration a general impression which compared signs exert on the consumer. I’m still not so certain if this trade mark (trapezoid box/packaging for a bar of chocolate with characteristic rectangle “window” at the front which allows the consumer to see the texture of the chocolate) should be perceived as “trade dress” as it was discussed by the SCOTUS in its judgment in the case Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). Maybe it is a three-dimensional sign/trade mark (3D).

Trade mark law, case II GSK 265/06

May 7th, 2007, Tomasz Rychlicki

On 1 December 2003, Telekomunikacja Polska S.A, filed an opposition against the decision of the Patent Office of 26 March 2003 granting the right of protection for word-figurative trade mark Teleaudio R-143563 for Teleaudio Sp. z o.o. for services in classes 38 and 41 such as line and/or phone numbers renatal, audio-text services, organization of entertainment and education competitions.

R-143563

TP S.A. stated that it is the owner of AUDIOTELE R-101622 trade mark and word-figurative trade mark AUDIO TELE R-101623, registered with the earlier priority, which are used in trade from 19 March 1995 for audio-text services. TP S.A. argued that it was the first company that lanched on 19 March 1995, a national audio-text system under the “audiotele” brand name. TP S.A. argued also that TELEAUDIO Sp. z o.o. entered the market of audio-text services almost a year later, and deliberately chose imitating sign for its firm (company name) and the trade mark, and copied the graphic which depicts a phone. According to TP S.A. such actions violated its property rights and might mislead the public as to the origin of services.

The PPO ruled that the differences between the trade marks were not sufficient to eliminate the similarity between the compared signs. The essential elements of those marks – the words AUDIOTELE and TELEAUDIO were confusingly similar. According to the PPO the figurative elements of marks perform only a supporting role, as they will be perceived by the public as a decoration, not as the most significant elements that identify the source of the services. The PPO has indicated that the average customer will focus on the words AUDIOTELE and TELEAUDIO because in assessing the similarity of characters as a whole, the dominant and convergent elements of the sign are of crucial importance.

R-101623

Teleaudio Sp. z o.o. decided to file a complaint. The Voivodeship Administrative court in Warsaw in its judgment of 25 April 2006 case file VI SA/Wa 2082/05 dissmissed the case. In the opinion of the VAC, the PPO has properly analyzed the similarity of TELAUDIO R-143563 trade mark and opposing AUDIOTELE sign. Both signs had to be compared, given the verbal, aural and semantic similarity. The VAC held that the case in question concerns the similarity of signs in verbal, aural and semantic aspects. The Court considered these factors as affecting the risk of confusion. The VAC noted that the PPO has analyzed the sign as a whole, and rightly presented the idea about the possible characteristics that may affect the ability to distinguish one trade mark from another. Teleaudio Sp. z o.o. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 265/06 dismissed the case. The SAC ruled the VAC accurately assessed the similarity of signs as an integral whole. The SAC noted also that the case-law of the Supreme Court established the rule that the legal assessment on the basis of Article 7 and Article 9(1)(i) and (ii) of the TMA with regard to word-figurative trade mark should be based on an integral whole of a trade mark, and not only one of the words, which is only one of its components (see the judgement of the Supreme Court of 11 March 1999, case file III RN 136/98, published in OSN, 2000/1/2).

The Court ruled also that the issue of similarity of trade marks is both the factual and legal category. See also “Trade mark law, case II GSK 36/05“. The Court ruled that the VAC rightly pointed out that the similarity of signs is examined and assessed based on common elements of marks, not by the differences. Thus, the differences do not preclude the similarity of the signs. The examination of the similarity should thus lead to the objective similarities and differences, and their sum should be related to the average attention of a reasonable consumer (see U. Promińska, Naruszenia praw na dobrach niematerialnych, PIRzP, 2001, p. 95 and literature cited therein).

Trade mark law, case II GSK 105/06

December 10th, 2006, Tomasz Rychlicki

The Supreme Administrative Court in Warsaw in its judgment of 26 September 2006 case file II GSK 105/06 held that in the case of the collision of two registered word trade marks, which one is single word sign and the latter complex sign, the mere similiarity of one single word of a complex trade mark cannot be used as an argument to request the invalidation of a trade mark registered with the later priority if the other words used in this trade mare make it distinctive enough under normal conditions of trade.

This case concerned EXTASE EXOTIC NATURE IR-671573 trade mark owned by Mäurer + Wirtz GmbH & Co. KG and the request fot the invalidation of the right of protection filed by Koninklijke Sanders B.V., the owner of EXTAZA R-57075 trade mark.

Trade mark law, case II GSK 64/06

August 10th, 2006, Tomasz Rychlicki

IMPERIAL TOBACCO POLSKA Spółka Akcyjna the owner of “M MOCNE” R-68755 trade mark filed a request for invalidation of the right of protection for “AS MOCNY t” R-139925 registered for Zakłady Tytoniowe w Lublinie Spółka Akcyjna.

R-139925

The Supreme Administrative Court in its judgment of 25 May 2006 case file II GSK 64/06 held that the word “mocne” (in English: strong) itself that is used as an indication of cigarettes, has not sufficient distinctive chracter as a trade mark. It may appear as part of a trade mark, but on a distinctive characteristic of a trade mark, which includes the word “mocne”, will decide other words or images and the word “mocne” will remain purely informational sign that could not become distinctive through use as a trade mark, even in a long term.

R-68755

The SAC held that all manufacturers of cigarettes have the right to use purely informational sign to indicate the quality of cigarettes sold.

Trade mark law, case II GSK 63/05

June 22nd, 2006, Tomasz Rychlicki

Hortino (formerly Zakład Przetwórstwa Owocowo-Warzywnego, “Zakład” for short) entered a sale agreement with Hortex on 31 May 2000, purchasing one of the Hortex’s manufacturing units located in Leżajsk. The agreement did not apply to any trade mark assets and was not a trade mark licence agreement at all. In June 2000, Zaklad added to its company name the word “Hortino”. One month later, the company (now called Hortino) applied to the Polish Patent Office (PPO) to register a trade mark for goods in classes 5, 29, 30, 31, 32, 39, and 42 of the Nice Classification. The trade mark was represented as a white snowflake on a blue rectangular background with the word “Hortino” in white letters.

R-130090

The PPO registered Hortino’s trade mark R-130090 in June 2001. Hortex challenged the registration before the PPO claiming that the decision to grant Hortino’s trade mark was inconsistent with article 9(1)(1) he 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, repealed on 22 August 2001 by the 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.

Hortex claimed that this section clearly precluded registration of a trade mark with later priority if its usage was in conflict with an already-registered trade mark. Hortex was already the owner of a registered trade mark composed of a white background, green bordering, and the letters “Hortex” in red. The Board of Oppositions in its decision of 9 May 2003, case Sp. 192/01, not only upheld Hortex’s objection but also decided that Hortino’s trade mark was registered contrary to Article 8(1) and (2) of the TMA. This Article prohibits registration of a trade mark that is contrary to principles of social comity (a very broad Polish civil law legal concept, in some respects similar to the public policy rule) or violates the personal or financial rights of a third party. The PPO also ruled HORTEX trade mark is so-called “hard sign” that is existing on the market for many years and it is easily identified by the customers, thereby the risk of confusing it with another mark is increasingly significant.

Hortino appealed to the Voivodeship Administrative Court in Warsaw, which upheld the contested decision in its judgment of 9 September 2004, case file II SA 2481/03. The Voivodeship Administrative Court also ruled that the registration of Hortino’s mark was in breach of article 9(1)(1) of TMA, that mark being sufficiently similar to an earlier registered trade mark to be likely to confuse consumers, under regular conditions of commerce, as to the origin of goods. Once again, Hortino filed a cassation complaint, this time to the Supreme Administrative Court. The SAC declined to hear the case and upheld the lower court’s decision in its judgment of 24 May 2005, case file II GSK 63/05.

This successfully ended the administrative procedure between the respective parties. The second suit was decided by the civil court and I reported on this case in my posts entitled “Unfair competition delict, case V CSK 237/06“.

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 article 31 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, is a term of substantive law and shall 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 VAC 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 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. The Court ruled according to Article 30 of the Act on 31 January 1985 on Trade marks (Journal of Laws No 5, item 17 with later 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 trademark registration, use of a trademark or to demand the invalidation of a trademark registration for the sake of the collision with its own rights.

R-142204

There is a presumption of good faith and bad faith 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 graphic, without taking into the consideration of the word elements of the sign, or doing it insufficient way. Therefore, if the Polish Patent Office examines individual elements of a sign, it should in next, to put them together and to draw the final conclusions. See also “Trade mark law, case II GSK 247/06“.

Trade mark law, case VI SA/Wa 1514/04

August 11th, 2005, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 28 July 2005 case file VI SA/Wa 1514/04 held that the invalidation of a right of protection for a trade mark serves as a correction of an error that was made by granting such right. The only condition for the invalidation is the failure to comply with statutory requirements that are required for the grant of such right. The right of protection applies to the entire trade mark as it was provided in the application, and subjected to registration. The law does not protect a part of a word trade mark, but covers the whole sign and protect it, in such form, in which the trade mar was applied for and registered. This case concerned DELITKI R-94582 trade mark.

Trade mark law, case II SA 2778/01

February 28th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgement of 28 March 2002, case file II SA 2778/01 held that according to the settled case-law, all the issues with regard to the similarity of trade marks are resolved on the basis of the risk of confusion as to the origin of goods. And the risk of confusion as to the origin of goods consists of similarity of goods and similarity of signs. The Court ruled that the trade marks are compared and examined globally, with particular emphasis on its dominant and distinctive elements. This case concerned “Królewska Para” R-115243 trade mark.

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.

R-107547

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.