Archive for: Art. 156 §1 pt 2 APC

Trade mark law, case VI SA/Wa 1970/09

July 20th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for the word-figurative trade mark Veraderm żel silikonowy R-167213 registered for goods in Class 5 and owned by P.A.D. Technologies Ltd. Spółka z o.o. The request was filed by the producer of Zerader gel, who claimed that the trade mark in question is similar to the name of its product and that the Polish company acted in bad faith.

R-167213

The Voivodeship Adminsitrative Court in its judgment of 15 January 2010 case file VI SA/Wa 1970/09 repealed the contested decision and held it unenforceable. The Court ruled that similarity of signs cannot serve as a basis in recognition of bad faith. The Court also noted that the oppositon was brought after the prescribed term has expired and there was no adequate justification for it. Such formal errors lead to the outcome of the judgment.

Categories: Art. 145 PBAC | Art. 156 §1 pt 2 APC | Art. 164 IPL | Art. 246 IPL | Art. 252 IPL | Art. 255 IPL | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | Polish Administrative Proceedings Code | Polish Patent Office | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 746/09

August 10th, 2010, Tomasz Rychlicki

This is the continuation of a story decribed in “Trade mark law, case VI SA/Wa 2284/08” that concerned the trade mark HERITAGE FILMS. The Supreme Administrative Court in its judgment of 10 August 2010 case file II GSK 746/09 dismissed the cassation complaint brought by Zygmunt Piotrowski. The SAC held inter alia that the provisions of the TMA or the IPL do not provide in the course of the litigation proceedings lead by the Polish Patent Office, for the possibility to control the legality of the administrative proceedings that concerned the registration of a given trade mark. The legality of a decision granting the right of protection should be challenged in different proceedings.

Heritage

The Court noted that Mr Piotrowski confused the concepts of “invalidation of the registration right” or “invalidation of right of protection for a trade mark” with the annulment of the decision on the granting of the right. There are different grounds for such decisions and other procedures on their issuance, but in case of the breach of the provisions listed in Article 29 of the Trade Marks Act, those conditions may overlap, and only in this case they might be raised in the opposition proceedings. Consequently, the invaliditon of the protection right, although identical in its consequences, cannot be identified with the institution of the annulment of the decision on the granting of the right of protection.

Categories: Art. 1 ARNR | Art. 131(1)(i) IPL | Art. 144 IPL | Art. 156 §1 pt 2 APC | Art. 164 IPL | Art. 253(2) IPL | company name or firm | copyright infringement | copyright law | copyright misuse | copyright ownership | distinctive character | generic sign | personal rights or interests | Polish Act on Authors Rights and Neighbouring Rights | Polish Administrative Proceedings Code | Polish Supreme Administrative Court | trade mark invalidation | trademark law.

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.

Categories: Art. 151 PBAC | Art. 156 §1 pt 2 APC | Art. 246 IPL | Art. 253(2) IPL | Art. 255 IPL | Art. 29 TMA | Art. 315 IPL | Art. 8(1) TMA | Art. 8(2) TMA | company name or firm | personal rights or interests | Polish Act on Proceedings Before Administrative Courts | Polish Administrative Proceedings Code | Polish Supreme Administrative Court | trade mark invalidation | trademark law | Voivodeship Administrative Court.