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Archive for: Polish Act on Trade marks

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 “kucyk pony” R-139097 trade mark 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 “kucyk pony” R-139097 trade mark which consisted of using by the INTERKOBO of “Princes’ s Pony” sign for designation of ponies’ toys. INTERKOBO argued also that HASBRO restricts the freedom of economic activity of its competitors, asking them to stop marketing of toys in the form of a small pony and requesting destruction of such products. By registering of the trade mark in question HASBRO had the intention of its use in isolation from the goods for which it was registered, and the intention of closing the access to the market for its competitors, the more that HASBRO as a professional market player should knew or should have known that the term “kucyk pony” as used for the toys in the form of a pony does not have any sufficient distinctiveness. INTERKOBO stressed that HASBRO Sp. z o.o. is a part of capital group operating on the global toys market, which is the position that allows it to dominate the market for local manufacturers of toys and contrary to the scope of the use made of registration to combat competition, which is contrary to the principles of the social coexistence.

HASBRO claimed that its sign is used on the Polish market, on the packaging of “kucyk pony” toys and other materials, since 1998 and is the subject of a number of marketing activities, and the brand “kucyk pony” includes not only toys, but also videos and a monthly magazine for children. HASBRO argued that its trade mark has a strong distinctive character and can be regarded as a reputable one, in relation to the goods it designates it has the so-called primary distinctive character.

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

Trade mark law, case II GSK 626/09

September 6th, 2010, Tomasz Rychlicki

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

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

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

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

Trade mark law, case II GSK 495/09

August 10th, 2010, Tomasz Rychlicki

On 14 March 1994, Polish entrepreneur operating under the name Usługi Pogrzebowe “Hades” Włodzimierz Wasilewski from Częstochowa applied for the right of protection for HADES Z-130892 trade mark in class 45, funeral services. Another Polish entrepreneur operating under the name Nowak Tomasz Firma Pogrzebowa HADES from Łódź filed an opposition to a final decision of the Patent Office on the grant of the right of protection for HADES R-148641 trade mark.

R-148641

Tomasz Nowak claimed that the Polish Patent Office ruled on the discontinuance of examination proceedings for HADES Z-130892 because of the failure to pay application fees and on 6 March 1999, he decided to file for the right of protection for word-figurative trade mark HADES Z-198798 in classes 26 31 39 42. On 26 September 2001 the PPO granted the right of protection for HADES R-132619 trade mark. Tomasz Nowak argued that the resumption of proceedings by the Patent Office on the application of HADES Z-130892 trade mark, which led to the granting of the right of protection, deprived him of part of the right acquired in good faith and the possibility to obtain the protection for the next sign. According to Tomasz Nowak the decision on the grant of the right of protection for HADES R-148641 trade mark, not only violates his right to earlier acquired trade mark, but most of all it violates the principle of certainty and security of legal transactions. It leads to a situation where the market will experience two identical trade marks, registered for identical goods, however, enjoyed by the various owners, which is contrary the rules of trade mark law of course.

R-132619

The PPO dismissed the opposition and Tomasz Nowak filed a complaint against this decision of the PPO. He based its claims on provisions of article 8(1) and (2) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

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;

Tomasz Nowak also challenged the examination proceedings which led to the registration of the questioned trade mark.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 January 2009 case VI SA/Wa 1941/08 ruled that legal provisions invoked in the complaint cannot be applied to assess the legality of the registration proceedings conducted by the PPO. Accordingly, the request for invalidation of right of protection of HADES trade mark under these provisions was irrelevant. The provisions of the TMA, or the IPL does not provide in the course of the litigation proceedings lead by the PPO, the possibility to control the legality of the administrative proceedings that concerned the registration of the questioned trade mark. The Court ruled that the allegations of violation of the administrative procedure by the PPO could only qualify as a basis for annulment of the decision. Tomasz Nowak was required to bring such claims in the complaint, however he did not so. Tomasz Nowak filed a cassation complaint.

The Supreme Administrative Court in its judgment of 15 June 2010 case file II GSK 495/09 dismissed the cassation complaint. The SAC ruled that the VAC could not review the decision on the grant of a right of protection for HADES R-148641 trade mark. The VAC had to decide within the scope of the complaint and shall be bound by the legal ground invoked by the requesting party. The SAC also expressed the view that the registration of the name of someone else’s company does not preclude the registration of a trademark but the right to a name of the company must be infringed, and the existence of such right has not been proven by Tomasz Nowak. The complainer has not demonstrated that he had the right to name of the company. Actually both entrepreneurs have the right to use HADES sign as their business name. The complainer also argued that the mere prior use of the sign and not in relation to the applicant, but in relation to the entitled to the right of protection, provides a sufficient argument that the questioned trade mark infringes personal or economic rights of third parties. The SAC ruled that this view is incorrect. It clearly refers only to infringement of personal or property rights.

Trade mark law, case Sp. 334/05

July 30th, 2010, Tomasz Rychlicki

On 1 March 2004, the Polish Patent Office registered word-figurative trade mark CZUWAJ R-152214 (in English: “Be Prepared”). Związek Harcerstwa Polskiego – Główna Kwatera is the owner. The sign looks exactly the same as the Scouts Cross.

The final design of Scout’s Crass was approved during ZHP’s unification conference held on October 1-2 1918 which has choosen this sign as the official badge of Polish scouting In November 1918 the Polish Ministry of War decreed that the Krzyż Harcerski was the only civilian emblem that might be worn on military uniforms. The tradition continues to this day.

Nowadays, there are three major scouting organizations in Poland. Związek Harcerstwa Polskiego, Związek Harcerstwa Rzeczypospolitej and Stowarzyszenia Harcerstwa Katolickiego Zawisza.

ZHR filed a request for invalidation of the right of protection. The request was based on provisions of article 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 subsequent amendments.

A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence,

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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, provides more stricter regulations against registering such signs.

Article 131
1. Rights of protection shall not be granted for signs:

(…)

(ii) that are contrary to law, public order or morality, or

(…)

2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,
(ii) it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organisations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organisations performing activities in vital public interests, where these organisations’ activities extend to the entire territory of the State or to a substantial part thereof, unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organisation, to use the sign in the course of trade,

(…)

(v) it incorporates elements being symbols, in particular of a religious, patriotic or cultural nature whose use could hurt religious feelings, sense of patriotism or national tradition,

The Polish Patent Office in its decision case file Sp. 334/05 invalidated the right of protection. The PPO ruled that all Polish scouts’ organizations should have the right to use this sign. This decision is not yet final. A complaint may be filed to the Voivodeship Administrative Court.

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 II GSK 387/09

March 30th, 2010, Tomasz Rychlicki

Tianjin Cosmetics Scientific – Technical Research Institute Co., Ltd from China filed a request for invalidation of PULANNA R-76294 and PULANNA R-76424 trade marks. The company from China claimed that the person who applied for the protection of these two trade mark was acting as a Polish agent of Tianjin Cosmetics Scientific and he has concealed the fact of both trade mark applications and subsequent registrations.

The Supreme Administrative Court in a judgment of 17 February 2010, case file II GSK 387/09 ruled that to the extent as follows from an international agreement, where a trademark has been applied for protection by and on behalf of, or the right of protection has been granted for, an agent or a representative of the person enjoying the exclusive right to use that trademark in another country, that person may, if the agent or representative acted without that person’s consent, demand that the protection granting proceeding be discontinued or the right of protection revoked. He may also demand that the right of protection be granted on his behalf, or the right already granted transferred to him.

The right may not be demanded to be revoked or transferred, where the entitled person has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use.

See also “Trade mark law, case II GSK 950/08“.

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 II GSK 1111/08

January 13th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 24 July 2008, case file VI SA/Wa 237/08, dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeals against the Polish Patent Office (PPO) decision of 19 March 2007, case files Sp. 68/04 and Sp. 69/04, regarding the invalidation of the right of protection for word-figurative trade marks: TIFFANY R-128063 and “Tiffany & Broadway Inc.” R-128064 which were registered in class 25 for shoes. The New York’s company argued inter alia that use of TIFFANY trade mark for goods such as footwear is a parasitic activity that uses another’s trade mark reputation and is bringing undue financial benefit to the holder of national registrations. The Company also stressed the fact that its trade mark is subject to protection under article 8 of the Paris Convention.

The VAC ruled that the application for the protection of the TIFFANY mark for goods in class 25 was contrary to the principles of social coexistence because it caused the risk of weakening the reputation of the trade mark. Given the fact that the shoes are cheap and readily available, there is a risk of dilution of the reputation of TIFFANY trade mark and it may lead to lose its attractiveness among the exclusive clientele of goods bearing this mark.

The SAC in a judgment of 8 July 2009, case file II GSK 1111/08 ruled that 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, do not explicitly provide for any special protection for unregistered reputed trade marks. However, the doctrine and the Polish case law have already accepted the concept, that such protection could be provided under article 8(1) of the TMA.

A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;

In particular looking at the circumstance of “a trade mark conflicting with the principles of social coexistence”, from the subjective perspective – it was commented that, the “contradiction/variance with the principles of social coexistence” may concerning the conduct/behavior of the applicant. On the basis of such conclusions, the registration of a sign for the goods of another kind, if the registration was intended to use the reputation of another’s trade mark or it was a threat of such reputation, was excluded. A trade mark application that was filed contrary to the principles of social coexistence, was an application made in bad faith. The absolute grounds/obstacles that are provided against the registration of the mark as defined in article 8(1) of the TMA do not directly refer to the relationship between the sign that was applied for and any other competing trade mark, however, in accordance with the accepted interpretation of that provision, in case of the infringement of the rules of social coexistence, the obstacle could be the inappropriate behavior on the applicant (its actions done in bad faith). The assessment of applicant’s actions, who was motivated by the desire to use another’s trade mark reputation, should therefore be also varied according to circumstances of its motivation and, not only related to the trade mark itself.

The application for the right of protection for a trade mark that was made with the intent to use another trade mark’s reputation should be judged as an application that was made with the breach of the rules of social coexistence (application made in bad faith), regardless of whether it concerns a reputed registered trade mark or unregistered reputed trade mark.

The Polish case law, for instance the Supreme Administrative Court in its judgment of 9 May 2008, case file II GSK 506/07, that was previously reported in the post entitled “Trade mark law, case II GSK 506/07“, already established the rule that in a case of famous trade mark and its reputation, besides its recognition, it must be also characterized by the following characteristics:

market share/participation (both quantity and value of sold goods),
range and long-lasting of an advertisment of the product bearing a trade mark,
territorial and temporal range of use,
licences granted for trade mark use, quality of goods bearing a trade mark,
value of a given sign in assessment of an independent financial institution,
size and extent of expenditures spent on promotion of a mark,
the relationship on prices of substitute goods,
if (and to what extent) the mark is used by third party.

The SAC also noted that the Community case law provides several fundamental conditions for the recognition of a trade mark as a reputed one. These are:

knowledge of the trade mark by a significant group of customers,
the contribution of the trade mark in the market,
intensity and geographic scope of the use,
intensity matching of goods with the trade mark,
the size of expenditures on advertising and promotion of the trade mark.

The SAC cited inter alia the judgment of the Court of Justice of the UE of 14 September 1999 in case C-375/97, General Motors and the judgment of the Court of First Instance of 13 December 2004 in case T-8/03, El Corte Ingles and the CFI’s judgment of 25 May 2005 in case T-67/04, Spa Finders.

It is also clear that the reputation of a trade mark must be assessed and established in the country in which the protection is sought. If one would like to qualify a given trade mark as a reputed one in the Republic of Poland, then the argument of the international reputation of a trade mark is not sufficient. The basic circumstance for the recognition of the reputation of a sign in a specific country is to show by a person who is invoking this argument, the market share in terms of both quantity and value of goods sold.

The SAC held that provisions of the First Directive 89/104/EEC of 21 December 1988 do not preclude the possibility of granting the protection to unregistered reputed trade marks under the national law. Just to keep it in order, it is worth adding, that 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, provides in article 132(2)(iii)

2) A right of protection for a trademark shall not be granted, if the trademark:
(iii) is identical or similar to a renown trademark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark. The above provision shall apply to well-known trademarks accordingly.

for the protection of registered trademarks to the extent of the wording of article 4(4)(a) of the Directive. The trade mark application that was made in bad faith shall be rejected based on the absolute ground for refusal of protection based on provisions of article 131(2)(i) of the IPL.

2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,

The SAC ruled that the provisions of article 4(4)(a) of the Directive cannot be interpreted as the maximum limitation for the protection of famous marks in the national law and it would be difficult to follow the arguments that the First Directive 89/104 is an example of the so-called “complete harmonization” citing the judgment of the Court of Justice of the European Union of 9 January 2003 in case C-292/00, Davidoff & Cie S. A.

According to the SAC, the court of first instance (VAC) wrongly assumed the bad faith of the applicant and it did not consider the fact that the applicant has conducted its business in Poland since 1990 with the use of the mark, and after about five years of its activity, the company applied for the registration of the mark. These circumstances certainly were not indifferent to assess the intentions and purposes of the applicant so the VAC should address them in the grounds of the appeal.

When deciding on the interpretation of article 8(1) of the TMA, which allows for the protection of not registered reputed trade marks in Poland, it should be also noted, that such protection have a special character because it applies to unregistered marks, and it is an exception to the principle of protecting industrial property rights by the registration process. This requires preserving much care, so that without proper justification, would not depreciate the importance of registering trade mark and it would not reduced the registration to a purely formal procedure that has no importance.

Therefore, the SAC annulled both questioned judgments of the Voivodeship Administrative Court and returned to the VAC for reconsideration in accordance with the conclusions reached and ordered the Polish Patent Office to pay Tiffany & Broadway Inc. Div. of Texpol Corporation 1200 PLN as reimbursement of costs of the cassation compliant.

Administrative, civil and criminal proceedings in trade mark cases in Poland

December 22nd, 2009, Tomasz Rychlicki

I. The Law
The main sources of binding laws in the Republic of Poland are the Constitution of 2 April 1997, acts passed by the Parliament, ratified international treaties and regulations issued, for example, by the Prime Minister or the Council of Ministers – Polish government. Regulations are issued for the purpose of implementation of acts. The main legal acts on trade mark protection in the Republic of Poland are the following.

I.A. Substantive law

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.
Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, 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 subsequent amendments.
Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No 47, item 211, with subsequent amendments

I.B. Procedural law

Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments.
Act on proceedings before administrative courts – PBAC – (in Polish:Prawo o postępowaniu przed sądami administracyjnymi) of 30 August 2002, Journal of Laws (Dziennik Ustaw) No 153, item 1270, with subsequent amendments.
Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, Journal of Laws (Dziennik Ustaw) No 43, item 296, with subsequent amendments
Criminal Proceedings Code – CRPC – (in Polish: Kodeks Postępowania Karnego) of 6 June 1997, Journal of Laws (Dziennik Ustaw) No 89, item 555, with subsequent amendments.
Act on Patent Attorneys – APAT – (in Polish: ustawa o rzecznikach patentowych) of 11 April 2001, Journal of Laws (Dziennik Ustaw) No. 49, item 509, with subsequent amendments,

I.C. EU law
Since 1 May 2004 which was the accession day to the EU, the Republic of Poland has been bound by all aquis communitaire including the Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (CTMR). The CTMR is a part of the Polish Legal system and is directly aplicable by Polish Courts, especially by the Court for the Community Trade Marks and Community Designs which is located in Warsaw

II. Different routes, different proceedings
The right of protection for a sign being capable to be registered as a trade mark is granted by the Patent Office of the Republic of Poland (PPO). Trade mark holders in the Republic of Poland may protect their rights in civil and criminal proceedings. Moreover, they may also use the procedures before customs authorities.

The Republic of Poland is not a common law country and the courts are not bound by decisions of other courts. However Polish judges tend to widely recognise the decisions and verdicts of the Polish Courts of Appeal and the Polish Supreme Court. Only resolutions of the Supreme Court that are decided as a legal principle are universally binding. The decisions of foreign bodies such as the General Court and Court of Justice of EU may be recognised only as so-called persuasive precedents.

II. A. Administrative proceedings in trade mark cases
The Patent Office of the Republic of Poland is a central government agency responsible inter alia for receiving and examination of applications seeking protection for trade marks and deciding in matters related to granting rights of protection trade marks (decisions with regard to processing of national and International trade mark applications, decisions on the invalidation and the lapse of the right of protection for a trade mark etc.). The provisions of the Code of Administrative Proceedings shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by the IPL. Decisions made or orders issued by the PPO are liable to complaint lodged to the Voivodeship Administrative Court (VAC) in Warsaw. Judgments made by the VAC may be a subject of a cassation complaint filed before the Supreme Administrative Court (SAC).

II. B. Civil proceedings in trade mark cases
Trade mark infringement actions are brought before a District Court. There are no specific courts which have exclusive jurisdiction for resolving trade mark disputes, except the Court for Community Trade Marks and Community Designs which is strictly focused on the legal issues related to CTMs.

The Law on Industrial Property provides that a trademark owner’s rights will be deemed to have been infringed where there has been unlawful use of the mark in the course of trade, including unauthorized use of a trademark by a licensee and sublicensee. The remedies available to the trademark owner are as follows:

cessation of the infringement,
surrender of any unlawfully obtained profits,
compensatory damages in accordance with the relevant principles of the Civil Code or payment of a lump sum equivalent to a licence fee, or any other remuneration, which would have been due if the infringer had been authorized by the right holder to use the trademark. In this case, the trademark owner is obliged to prove that an intentional infringement of its rights has taken place,
announcement to the public of a verdict of the court (upon the request of a trade mark owner) as a whole or in part, or publication of information regarding the verdict,
a court order that the infringer (upon its own request, in case of unintentional infringement) to pay the relevant sum to the benefit of the trade mark owner if the cessation of infringement or forfeiture of the goods held by the infringer (means of manufacturing, materials) would be excessive, and the above-mentioned sum to be paid would fulfil the right holder’s interest.

The following cases, in particular, are also decided in civil law proceedings in accordance with the general principles of law:

for ascertainment of the authorship of an inventive project,
for ascertainment of the right to a patent, a right of protection or a right in registration,
for remuneration for the exploitation of an inventive project,
for remuneration for the exploitation of an invention, a utility model or a topography for state purposes,
for compensation for the transfer to the State Treasury of a right to a patent for a secret invention or to a right of protection for a secret utility model, a right of protection or a right in registration,
for infringement of a patent, a supplementary protection right, a right of protection or a right in registration,
for ascertainment of the right to exploit an invention, a utility model or an industrial design in the cases referred to in Articles 71 and 75 of the IPL,
for ascertainment of the right to use, in a local-scale activity, a mark registered on behalf of a third party as a trademark,
for ascertainment of the right to use a geographical indication,
for ascertainment of the loss of the right to use a geographical indication,
for the transfer of a patent, a right of protection for a utility model or a right in registration of an industrial design or a topography obtained by a person not entitled thereto,
for the transfer of a right of protection for a trad emark in the case referred to in Article 161 of the IPL.

II. C. Criminal proceedings in trade mark cases
The IPL defines counterfeit trademarks as identical trademarks illegally used or trade marks which in the course of trade can not be distinguished from the trade marks registered for the goods covered by the right of protection. The party aggrieved by the infringement has to commence a criminal action. Only after the filing of the motion can the proceedings be started and continued ex officio. The sole exception is when a person committing the crime in respect of a registered trade mark obtains permanent profits from its criminal activity or commits acts resulting in the turnover of counterfeit goods bearing the trade mark, which are of significant value. In such case the infringer is subject to more serious criminal penalties and proceedings will be started ex officio.

II. D. Custom seizures
Customs law, in addition to civil and criminal law, is the third administrative regime of protection for trade mark rights. Provisions of Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property are directly aplicable on the territory of the Republic of Poland. The application for action shall be submitted to the Polish Customs Chamber seated at Modlińska 4 Street, 03-216 Warsaw.

II. E. ADR in trade mark cases
Where a domain name including a sign that has been registered as a trade mark by an unauthorized third party, the trade mark holder can use mediation, alternative dispute resolution (ADR) proceedings or civil court action to obtain the cancellation or transfer of such a domain. See also “Polish case law on domain names“.

Trade mark law, case II GSK 1011/09

November 25th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 18 June 2009 case file VI SA/Wa 1731/08 ruled that while examining the violations of the rules of social coexistence, the Polish Patent Office must take into account also the subjective elements, which means that on existence of the conditions referred to in Article 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 subsequent amendments, may decide certain actions of the trade mark applicant, especially when these actions are characterized by offending behavior.

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;

This judgment concerned the invalidation proceedings of ecard R-150521 trade mark owned by Firstcove Technology Limited from Dublin. The VAC held also the right to company’s name (firm) is created at the time, when the order of entry into the commercial register is issued. However, the fact that information on the formation of a specific company was made publicly available, the issuance of which is required by law, should also be taken into account. This argument must be considered by the PPO in the assessment of allegations of violation of Article 8(2) of the TMA. The cassation complaint was dismissed by the Supreme Administrative Court in its judgment of 24 November 2010 case file II GSK 1011/09.

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 law, case VI SA/Wa 121/09

October 13th, 2009, Tomasz Rychlicki

On 9 October 1996, the Polish Patent Office registered the trade mark XAVIER LAURENT R-92393 for goods in class 3 such as personal deodorants. The trade mark is currenty owned by the Polish company HOUSE Spółka z o.o. from Zielona Góra. The International Trade Corporation Limited, the owner of XL XAVIER LAURENT IR-763083 trade mark filed a request for invalidation of the right of protection for XAVIER LAURENT R-92393 trade mark.

The ITC claimed it has been active in the cosmetics industry fo the long time and the most popular goods are these marked with the Xavier Laurent brand. The company had a national distributor of its products in Poland which on March 1994 applied to the Polish Patent Office for the trade mark registration of XAVIER LAURENT sign and later on it has assigned the right of protection for XAVIER LAURENT R-92393 to HOUSE. The ITC based its request on article 8(1) and (2) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with subsequent amendments.

A trade mark 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 request was also mentioning article 6septies of the Paris Convention for the Protection of Industrial Property. The Polish Patent Office dismissed ICT’s request and the company filed a complaint to the Voivodeship Administrative Court in Warsaw. On 5 May 2009, the VAC in a judgment case file VI SA/Wa 121/09, ruled that article 8(i) of the TMA must be interpreted broadly and concerns not only the form of trade mark, but also other subjective elements. The basis for invalidation may be, therefore, not only the characteristics of a trade mark itself, but also the reprehensible conduct of the applicant/owner. For the correctness of such interpretation of provisions of article 8(i) speaks the provisions of article 31 of the TMA that expressly provides for the invalidation of the registration rights acquired as a result of bad faith behaviour.

The VAC also held that article 161 of the IPL specifies the entity protected by this provision as “a person entitled to the exclusive use of the mark in a foreign country.” The protection provided for in article 161 may be used by any entity (entrepreneur) from abroad, which will demonstrate that at least in one Member state a specific trade mark is its “property”, especially it has the right of exclusive use that came from the relevant decision of public authorities (patent organ) in that country. The VAC anulled the Polish Patent Office’s decision from 2008 and decided that the decision was not subject to execution. The Judgment is not final yet.

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 in Class 16 such as magazines, brochures, crosswords, periodicals.

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 trade mark 1000 Jolek R-142003. 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 subsequent 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 CTM applications such as 150 no. 00466549, 250 no. 004665592, 350 no. 004665601, 222 no. 004665618, 333 no. 004665683, 555 no. 004665709 and Community Trade Marks such as 100 SUDOKU no. 004635711 and 200 SUDOKU no. 004635736. In its decision of April 2009, the PPO rejected Technopol’s oppostion. The company filed a complaint.

The Voivodeship Administrative Court 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 subsequent 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 II GSK 950/08

August 12th, 2009, Tomasz Rychlicki

On 2 September 1998, the Polish Patent Office has granted the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 for the Polish company “SCOTCH & SODA” POLSKA Jadwiga i Piotr Szlegiel Spólka Jawna from Gorzów Wielkopolski for goods in class 25. On 2005, Scotch & Soda B.V. from Netherlands filed a request for invalidation of the right of protection for SCOTCH & SODA R-100588 trade mark based on article 8(i) and 8(ii) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No. 5, item 15, with later amendments:

A trade mark shall not be registrable if:
i) it is contrary to law or to the principles of social coexistence;
ii) it infringes the personal or economic rights of third parties

The request was also based on provisions of article 6septies of the Paris Convention for the Protection of Industrial Property. The S&S company argued that for over twenty years it exports clothing goods marked with the Scotch & Soda trade mark to many countries in the world through local distributors. One of them was a Polish businessman, who in 1994 became the sole importer and distributor of Scotch & Soda products in Poland. According to S&S his Polish partner has abused its trust by obtaining the trade mark protection for Scotch & Soda trade mark for himself and in this way blocking access to the Polish market for S&S. In 2002, the S&S company has signed with Piotr Szlegiel a document called “cession of rights from the registration of the mark.” However, at the date of the signature of this document, the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 already belonged to “SCOTCH & SODA” POLSKA. In addition the S&S company received a financial request from the Polish entrepreneur.

“SCOTCH & SODA” POLSKA claimed that it was an equal partner, rather than the official importer and sole distributor of the S&S company’s goods and it was not bound by the agency or representative contracts. The legal predecessor of “SCOTCH & SODA” POLSKA had full autonomy inter alia, he was allowed to apply for the registration of the disputed mark on the territory of the Republic of Polish. This fact was known to S&S. Polish company has claimed that S&S failed to obtain the trade mark protection for SCOTCH & SODA sign based on the international registration under the Madrid Agreement and it did not take any action to change this situation. After the completion of courts’ proceedings the S&S company has offered “SCOTCH & SODA” POLSKA a royalty-free (free of charge) license to use the disputed trade mark for shoes throughout Europe in return for the transfer of the right of protection. These negotiations have not yielded results.

“SCOTCH & SODA” POLSKA was astonished by the fact that the S&S company “challenged” the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 for the first time after it has received a cease and desist letter (a request for voluntary fulfilment of plaintiff’s demand is a prerequsite to file a complaint in a civil suit against trade mark infringer) on October 2003.

“SCOTCH & SODA” POLSKA requested the Polish Patent Office to dismiss a request for invalidation of the right of protection for SCOTCH & SODA R-100588. The Polish company called the circumstances with regard to litigation that ended in a judgment issued by the Regional Court in Zielona Gora (case act signature V GC 522/03). the Regional Court dmissed a suit brought by S&S company based on article 161 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.

1. To the extent as follows from an international agreement, where a trademark has been applied for protection by and on behalf of, or the right of protection has been granted for, an agent or a representative of the person enjoying the exclusive right to use that trademark in another country, that person may, if the agent or representative acted without that person’s consent, demand that the protection granting proceeding be discontinued or the right of protection revoked. He may also demand that the right of protection be granted on his behalf, or the right already granted transferred to him.

2. The right may not be demanded to be revoked or transferred, where the entitled person referred to in paragraph (1) has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use.

However, the PPO did not agree with “SCOTCH & SODA” POLSKA arguments and it has invalidated of the right of protection for SCOTCH & SODA R-100588 trade mark in its decision of 2007. In the PPO’s assessment the legal predecessor of “SCOTCH & SODA” POLSKA has been acting in bad faith while applied for the protection rights to the disputed sign. According to the Polish case-law and doctrinal opinions that were cited by the PPO, the applicant for trade mark registration is acting in bad faith when he/she knows or should know that such action violates third parties’ rights. Acting in bad faith is also one who is relying on a right or legal relationship and knows that this right or a legal relationship does not exist, or he or she does not know, but the lack of knowledge can not be regarded as the justified circumstances. The PPO has also noted that in the legal commentaries on Polish trade mark law two competing views on bad faith are taken into account. First, bad faith occurs when a person who owns a disputed trade mark registration had to know or should know that the legal conditions to acquire this right were not met. In such case, the owner is always acting in bad faith when a mark has been registered contrary to the applicable provisions of the law or expressly recognized principle of social coexistence (see: article 8(i) of the TMA). By contrast, in the case of trade mark registration that was made despite the existence of an earlier priority right, an owner of such righ can be entitled as acting in good faith only if he or she was deceived (and it can be justified) with regard the extent of protection resulting from the trade mark right with an earlier priority. If the registration has been aquired by a person for a purpose other than to use a trade mark (for example, to force financial concessions from other entrepreneurs, to obtain control over imports, to force reaching of a license agreement) in this case, bad faith is understood as a qualified form of a breach of social coexistence rules. Such opinion was issued by R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 224. However, in turn, dr Elzbieta Wojcieszko-Gluszko thinks that there is no reason to modify the general concept of good and bad faith for the needs of the IPL regulations. According to dr Wojcieszko-Gluszko a valuable guidance for the interpretation with regard to bad/good faith may be a reference to the legal definition of a filing made in bad faith that is provided in the Benelux Trademark Law.

The PPO also cited arguments provided in the judgment of the Supreme Administrative Court of 6 August 2002, case file II SA 3879/01 and interpretation included in the judgment of 17 July 2003, case file II SA 1165/02 that was issued on the basis of article 8(i) of the TMA and in which the Court concluded that the issue of an assessment of the contradiction of a trade mark application with rules of social coexistence does not refer to trade mark only and itself, but also takes into account the contradiction with the principles of actions made by an applicant and their intended effect. In courts’ opinion the extending interpretation of the rules of social coexistence is justified if one notices that this general clause/rule has displaced such clauses and rules as the principles of good manners, fair trading and good faith. The PPO has considered as totally unfounded all arguments that the consent for a trade mark registration belonging to a partner was justified due to a lack of prohibition in the relevant articles of association, or in other agreements concluded between the parties. The concept of an agent or a representative in this case should be interpreted according to the Polish law. Selling products on the Polish market by the involved people was in such a role. “SCOTCH & SODA” POLSKA brought a complaint to the Voivodeship Administrative Court in Warsaw, which, in a jugment of 29 May 2008, case file VI Sa/Wa 402/08 dismissed the complaint. “SCOTCH & SODA” POLSKA brought a cassation complaint to the Supreme Administrative Court in Warsaw. The cassation complaint was dismissed in judgment of 2 July 2009, case file II GSK 950/08.

The SAC emphasized the fact that for the assessment of compliance of a registration of a mark with the principles of social coexistence (as referred to in article 8(i) of the TMA) the most authoritative is the moment of filing an application for trade mark registration of in the Patent Office, which in this case took place in March 1995. It could not be left imperceptible by the Courts that even “SCOTCH & SODA” POLSKA claimed that the disputed mark was not its property at the date of filing for registration in the Patent Office (sic!). Moreover, the legal predecessor of “SCOTCH & SODA” POLSKA did not inform S&S about his registration neither got a permission for such action. If it were otherwise, what is clear, the S&S company would not file for the recognition on the territory of the Republic of Poland of the protection for its international trademark.

As a distributor of the goods of an entrepreneur located abroad who was not leading any commercial activities in its own name on the Polish territory, the legal predecessor of “SCOTCH & SODA” POLSKA probably knew, or in any circumstance must have known that the application in its own name for registration of a trademark belonging to a foreign business violates provisions of article 6 septies of the Paris Convention. But not only. “SCOTCH & SODA” POLSKA predecessor’s behavior violated the rules of social coexistence, within the meaning of article 8(1) of the TMA. His actions in fact were directed at the appropriation of trade mark property rights owned by the S&S company, without obtaining any consent, in order to achieve unjustified benefits. Such behavior clearly violates the principles of social coexistence as it was decided by the Polish Patent Office and the Voivodeship Administrative Court in Warsaw.

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 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 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.

(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 VI SA/Wa 2258/08

May 28th, 2009, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 6 October 2008 case file II GSK 406/08 ordered the Voivodeship Administrative Court to reconsider the case. See “Trade mark law, case II GSK 406/08“. The VAC in its judgment of 8 April 2009, case file VI SA/Wa 2258/08 anulled the Polish Patent Office’s decision from 2007 and ordered the PPO to reconsider the invalidation of the brothers’ Miś trade mark. The Court ruled that a company name (the firm) serves to identify and to individualize an entrepreneur in legal and business market turnover, containing information about the characteristics and attributes of someone’s business. The finding that there was an infringement of these elements determines the recognition that there was an infringement of the law. However, infringement cannot be determined by the trade mark registration (even the later one) that was similar to the company name.

As the Supreme Administrative Court ruled in its judgment of 26 April 2006, act signature II GSK 31/06, the exclusive rights to the “firm” (company name) are not absolute, and the limits of its extent are set by the territory a firm operates, the subject of actual business activities of the company that is using given firm. In fact, only within these limits a conflict between similar company name (the firm) and trade mark may occur.

The Court, citing the earlier judgment of the District Administrative Court in Warsaw of case file 6 II SA 2757/02, ruled that the PPO had to consider if the registration of a disputed trade mark prevents other market participants from use a sign which has a purely informational meaning.

Trade mark law, case II GSK 764/08

May 22nd, 2009, Tomasz Rychlicki

In March 2007 the Polish Patent Office issued a decision invalidating the right of protection for the trade mark OFF THE LIP R-153658 owned by Polish company PREMIERE Spólka z o.o. from Chorzów, registered for goods in classes 18 and 25. The request for invalidation was brought before the PPO by German entrepreneur Kurt Wendler-Rothenberger, who owned two German trade mark registrations for OFF THE LIP RN-1120143 and RN-2015151. The request was based on article 8(i) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with later amendments:

A trade mark shall not be registrable if:
(i) it is contrary to law or to the principles of social coexistence;
Mr. Wendler-Rothenberger claimed that he had business relationships with the Polish company in the period from 1992 to 1996. In PPO’s opinion it had been proved that Polish company was fully aware of the fact that OFF THE LIP sign belongs to another entity, and such action of submitting someone’s else trade mark for registration in the Republic of Poland was contrary to the principles of good conduct in trade.

The Polish company brought a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 24 January 2008, act signature VI SA/Wa 1394/07 dismissed it, and ruled that all procedural matters have been sufficiently and thoroughly investigated and determined by the Polish Patent Office. The Court acknowledged that, from the beginning, the Polish company knew that OFF THE LIP sign was somebody else’s property — that of its contractor and business partner. In the court’s assessment it was a classic example of bad faith, since PREMIERE was aware that it does not have the right to this sign and even if it could not be aware – it should have known about that.

PREMIERE Sp. z o.o. filed a cassation complaint. The Supreme Administrative Court in its judgment of 12 March 2009 case file II GSK 764/08 rejected the complaint and ruled that the provision of article 8(1) of the TMA provides an independent and sufficient condition for the inadmissibility of the registration of a sign, and it’s in any way unrelated to the exclusive protection of marks registered and benefiting from protection in a given country. The SAC clearly held that filing a trade mark application of someone else’s sign when a special relationship of trust existed between parties of a contract, is a classic example of behaviour contrary to the principles of social coexistence.