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Archive for: Art. 7 APC

Trade mark law, case VI SA/Wa 1133/10

October 25th, 2010, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case II GSK 496/09“. The Voivodeship Administrative Court in Warsaw in its judgment of 4 August 2010 case file VI SA/Wa 1133/10 anulled the PPO’s decision and ruled it unenforceable. The Court held that the Polish Patent Office, while assessing the similarity of the opposing signs, ignored in general the question of the impact of a trade mark on recipient/consumers/buyers of the goods bearing the sign, and therefore it did not considered in a comprehensive way the impact of the entire mark, focusing only on one of its verbal elements – PREMIUM word, without attempting to explain the “impact strength (distinguishing ability)” of PREMIUM word as an informational sign that is used to designate the exceptional quality of a product.

IR-802093

In the opinion of the courts, this issue is very important, because while examining the compared signs, the impact of the opposing character – its distinctive ability may not be indifferent, and a “weak” sign must often tolerate the coexistence of the close signs. See U. Promińska, Ustawa o znakach towarowych. Komentarz, Wydawnictwo Prawnicze PWN, Warszawa 1998, p. 42.

Trade mark law, case VI SA/Wa 1099/10

October 20th, 2010, Tomasz Rychlicki

The Polish company Polski Koncern Naftowy ORLEN S.A. applied for the right of protection for word-figurative trade mark “BIG energy drink” Z-336460 for goods in Classes 06, 16, 32, 35, 43.

Z-336460

The Polish Patent Office issued a decision refusing to grant the protection in part of goods in Class 32 such as energy drinks, juices and juice drinks, carbonated and non-carbonated mineral water, drinks other than alcohol, syrups, concentrates for the preparation of drinks, sports drinks, nectars, beer and in part of services in Class 35 such as retail and wholesale sale services of energy drinks, juices and juice drinks, mineral water, alcoholic drinks, syrups, concentrates in the preparation of drinks, sports drinks. The PPO found also a conflicting CTM “BIG ENERGY” No. 002135812 registered for goods such as non-alcoholic beverages, fruit drinks, fruit juices and fruit nectars, bases and essences (included in class 32) for making the aforesaid beverages. ORLEN filed a complaint against this decision claiming that the refusal was based solely on the likelihood and hypothetical clues, not actual evidence of a convergence of signs and the resulting collision. There was also no presence of the product bearing the opposed trade mark on the Polish territory.

CTM-002135812

The Voivodeship Administrative Court in Warsaw in its judgment of 30 August 2010 case file VI SA/Wa 1099/10 annulled the contested decision. The VAC ruled the relationship between the petrol stations retail networks and certain “additional products”, bearing their trademark, is becoming ever closer. In such situation it significantly reduces the risk of confusion – the risk of misleading the public, which includes in particular the risk of associating the trademark with an erlier trade mark. The consumer begins to associate certain product (e.g., energy drink), not only with a specific sign, but also with a specific network of petrol stations, in which the drink will be available. The judgment is not final.

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 the trade mark kucyk pony R-139097 that was 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 trade mark “kucyk pony” R-139097 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.

Industrial design law, case VI SA/Wa 1764/09

September 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 14 December 2009 case file VI SA/Wa 1764/09 held that the examination of all of the evidence should include all evidence taken in the proceedings, as well as taking into account all the circumstances surrounding an individual evidence and relevant to assess their strength and reliability. The PPO while considering the evidence, cannot skip any of the proof, it may, however, in accordance with the principle of the free assessment of evidences included in Article 80 of the APC, refuse the reliability of an evidence, but then it is obliged to justify all the reasons of such decision.

Article 80
The public administration body shall assess whether a given circumstance has been proven on the basis of the entirety of the evidential material.

Rp-3506

This case concerned the industrial design “Noga fotela” (in English: chair leg), Rp-3506. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 2026/09

September 22nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 19 May 2010 case file VI SA/Wa 2026/09 held that for the purposes of assessing the probative value of the document, the reliability and accuracy of the information contained therein should be first examined. In this regard, in particular, the PPO should take into account the origin of the document, the circumstances of its preparation, its recipient, and then ask a question whether, given its content, it seems sensible and reliable.

Rp-8329

This judgment concerned the industrial design “Panel perforowany” (in English: perforated panel), Rp-8329. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case VI SA/Wa 2127/09

September 10th, 2010, Tomasz Rychlicki

The Polish company AFLOFARM Fabryka Leków Sp. z o.o. applied for the word-figurative trade mark “tabletki na uspokojenie Aflofarm” (in English: Aflofarm tablets for calming down) Z-298475 for goods in classes 03, 05 and 44. The Polish Patent Office refused to grant the right of protection in part of the goods in class 5 covering dietetic substances for medical use, food for babies. The PPO held that the right of protection shall not be granted for a sign that misleads the public as to the nature and properties of the good. Such misleading information is a sign that may cause false image of the average buyer as to the nature of the product, its quality or properties. The assesment of content of a signs is made by him or her from the perspective of the average consumer. The interest of the buyers requires the assumption that the sign is misleading, once a small group of consumers may be misled as to the characteristics of the goods or services, since these characteristics may affect the decision taken, in relation to those goods or services. Under such assumption, the assessment cannot be affected by anything outside the relationship sign – the goods with the reasonable buyer’s idea on such relationship. It follows that the sign “tabletki na uspokojenie Aflofarm” on the goods listed in class 5 should be considered as misleading the buyers as to the nature, purpose, or functional characteristics of these goods.

Z-298475

AFLOFARM argued, that it’s not true that the buyer/consumer “is left alone” with a sign and a product bearing the questioned trade mark. These products are only available in pharmacies and are issued only by a professional that is a pharmacist. Thus it excludes the confusion of the average consumer as to whether he or she has bought the wrong product.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 March 2010 case file VI SA/Wa 2127/09 agreed with AFLOFARM’s arguments and reversed the contested decision. The Court also noticed that “tabletki na uspokojenie Aflofarm” trade mark was applied for dietary agents/means for medical use, rather than dietary substances for medical purposes. For this reason, the Court held that the goods that are marked with a “tabletki na uspokojenie Aflofarm” trade mark will not cause consumers’ confusion since products of such indications or effectiveness can be classified differently, depending on their registration or application.

Trade mark law, case VI SA/Wa 21/10

September 7th, 2010, Tomasz Rychlicki

The Polish company Atlantic sp. z o.o. applied for the word-figurative trade mark ATL ATLANTIC Z-313731 in classes 03, 18 and 25. The Polish Patent Office refused to grant the right of protection in part of the goods covering deodorants for personal use, soaps, perfumery, cosmetics, cosmetic kits, portable suitcases for cosmetics, travel bags for clothing, shopping bags, beach bags, handbags and women handbags.

Z-313731

The PPO held that there are similar and conflicting trade marks such as Atlantic R-141375 for goods in class 18, Atlantic IR-631190 and ATLANTIC IR-787876 for goods in class 03.

R-141375

The Voivodeship Administrative Court in Warsaw in its judgment of 7 April 2010 case file VI SA/Wa 21/10 dissmissed Atlantic’s complaint and upheld the contested decision. The Court ruled that in all cases where the problem of the similarity of the opposed trade marks arises, it is the result of two closely related issues, i.e. the similarity of signs and the similarity (homogeneity) of goods/services for which the signs are applied for, registered or used. Both these factors determine the scope of trademark protection (citing M. Kępiński [in:] Niebezpieczeństwo wprowadzania w błąd odbiorców co do źródła pochodzenia towarów w prawie znaków towarowych, ZNUJ PWOWI zeszyt no 28 of 1982, p. 10). The VAC held that the convergent elements of disputed signs have crucial meaning for the buyers and such conclusion is justified from a psychological point of view, since the purchaser keeps in mind only a general representation of the sign for which is he or she looking for. Therefore the buyer chooses a sign based only on dominant elements while ignoring differences.

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 VI SA/Wa 180/10

September 6th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 16 June 2010 case VI SA/Wa 180/10 held that in assessing the confusing similarity the PPO should not be limited to include only one component of a complex sign while comparing it with another trade mark. On the contrary, such a comparison is made by examining the signs as whole.

Trade mark law, case II GSK 607/09

August 31st, 2010, Tomasz Rychlicki

TRODAT POLSKA Sp. z o.o. from Warsaw applied for the right of protection for Pieczątka 2 Z-294822, Pieczątka 3 Z-294821, and Pieczątka 4 Z-294823 trade marks in class 13. Pieczątka means “stamp” in English. The Polish Patent Office in letters dated 27 March 2007 informed the applicant that these signs are not capable of serving as trade marks due to lack of sufficient distinctive character and urged Trodat to submit comment on this issue. The applicant did not respond to the letters sent by the PPO, in particular, Trodat did not take any position on the reported lack of sufficient distinctive character.

Z-294821

The Supreme Administrative Court in its judgment of 14 July 2010 case file II GSK 607/09 held that the burden of proof rests on those who seek for legal consequences from a particular fact for itself (the applicant), it results from a series of obligations incumbent on the applicant, including the obligation to provide explanations, to take an active part in the proceedings and to submit precise requests. These obligations are provided in Articles 145(2) and 152 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, in connection with Regulation of the Prime Minister of 8 July 2002 on filing and processing of trademark applications, Journal of Laws (Dziennik Ustaw) No 115, item 998 with subsequent amendments.

Article 145
1. Subject to paragraph (2), where the Patent Office finds that the statutory requirements for the grant of a right of protection for a trademark have not been satisfied, it shall make a decision on refusal to grant the right.
2. Before the decision referred to in paragraph (1) is made, the Patent Office shall fix a time limit, within which the applicant is invited to react on the collected evidences and documents which imply the existence of grounds that may cause the right of protection to be denied.
3. Where the statutory requirements are found not to have been satisfied in respect to only certain goods, a right of protection for the trademark in respect of these goods shall be first to be refused by the Patent Office. On the respective decision becoming final the Patent Office shall grant a right of protection for the trademark in respect of the goods, for which it can be granted.

Article 152
The Prime Minister shall, by way of regulation, determine the detailed requirements to be satisfied by a trademark application, the detailed rules and procedure to be applied in the course of examination of trademark applications including, in particular, the extent to which the relevant information may be disclosed to the public after the expiration of the period referred to in Article 143 and the manner in which it is made available, as well as the extent to which the Patent Office is authorised to make corrections in the list of goods and their classification. The requirements to be satisfied by trademark applications may not be determined in such a way as to encumber the applicant with excessive and unreasonable impediments.

The renunciation of the party – despite the invitation issued by the Polish Patent Office – to submit sufficient evidence, explanations, positions may not be of no importance in a situation where the party alleges that the PPO erred in its decision in this particular issue, as a result of breach of the obligation imposed on the PPO to clarify the circumstances of the case in accordance with Article 7 and 77 of the 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.

Article 7
Public administration bodies shall uphold the rule of law during proceedings and shall take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public.

Article 77.
§ 1. The public administration body is required to comprehensively collect and examine all evidential material.
§ 2. At each stage of proceedings a body can amend, supplement or withdraw rulings made regarding the examination of evidence.
§ 3. An body conducting proceedings as a result of having been required to do so by the body having jurisdiction to settle the case (Article 52) may, on an ex officio basis or on application by one of the parties, hear new witnesses or experts on circumstances that form the objects of such proceedings.
§ 4. Universally accepted facts and facts known to the body ex officio do not require proof. Parties to proceedings should be informed of facts that are known to the body.

The SAC noted that the provisions of the IPL that provides the possibility to request the applicant by the PPO to submit comments or issue a statement, in fact, serve to define the limits of administrative case, such as defining what is to be examined by the PPO and to what extent this should occur. The PPO is required to make an invitation before taking a decision, therefore, before deciding on the matter. At this stage, it is possible to have the intervention of the parties, if, contrary to the intentions expressed in the request/application, the PPO, for example, does not cover by its activities of all elements of the case, or unreasonably restricts its borders.

Trade mark law, case VI SA/Wa 839/09

August 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative in its judgment of 5 August 2010 case file VI SA/Wa 839/09 decided on the complaint of the holder of the Polish trademark registration DSC R-82966 against the decision Sp. 2/98 of the Polish Patent Office of 28 January 2009 on invalidation of this trademark.

R-82966

The VAC has not examined substantive issues of the matter because as it has stated the decision of the Polish Patent Office is too general and it does not specify documents on which the Polish Patent Office has based its findings. In the Court’s opinion the Polish Patent Office quoting his findings has only used the phrase “it results from the submitted documents that…”, instead of giving precise description of each relevant document, which prevents the Voivodeship Administrative Court from presenting its opinion on the correctness of the questioned decision. In view of above, the complaint has been accepted and the matter has been transferred to the Polish Patent Office for reexamination.

Procedural law, case VI SA/Wa 146/10

May 24th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 29 April 2010 case file VI SA/Wa 146/10 held that the provisions of the Administrative Proceedings Code should be applied accordingly to the litigation procedure before the Polish Patent Office in cases not regulated by the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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. It means that PPO is required to conduct proceedings in such a way as to increase the trust of citizens in the State bodies and public awareness and appreciation of the law. This principle implies the requirement of a lawful and fair conduct of the proceedings and settlement of the case by a public authority, which is the basic principle of Rule of law. Only the proceedings corresponding to such requirements and decisions rendered in it can inspire the trust of citizens in public administrations bodies, even when administrative decisions did not include claims raised by the citizen.

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.

Patent law, case VI SA/Wa 2279/08

October 27th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 27 May 2009 case file VI SA/Wa 2279/08 ruled that the Polish Patent Office is not an authority that mechanically approves patents granted by the EPO. The Court held that if the dispute between the applicant and the Polish Patent Office related to the nature of the invention, as is was in this case, by refusing to grant a patent, the Patent Office in principle cannot merely on its own conviction as to the subject of the patent application. The PPO should seek to gather sufficient evidence to support its position. Such evidence could include witness-expert testimony. The absence of a comprehensive hearing of evidence and basing the questioned decisions mostly on its own belief in the recognition, what is the subject of the patent application, and such a situation took place in this case, justified the infringement of Articles 7, 77 § 1 and Article 107 § 3 of the APC, as having a significant impact on the outcome of the case.

Article 7
Public administration bodies shall uphold the rule of law during proceedings and shall take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public.

(…)

Article 77.
§ 1. The public administration body is required to comprehensively collect and examine all evidential material.
§ 2. At each stage of proceedings a body can amend, supplement or withdraw rulings made regarding the examination of evidence.
§ 3. An body conducting proceedings as a result of having been required to do so by the body having jurisdiction to settle the case (Article 52) may, on an ex officio basis or on application by one of the parties, hear new witnesses or experts on circumstances that form the objects of such proceedings.
§ 4. Universally accepted facts and facts known to the body ex officio do not require proof. Parties to proceedings should be informed of facts that are known to the body.

(…)

Article 107.
§ 1. A decision should contain: the name of the public administration body, the date of issue, the name(s) of the party or parties, the legal authority referred to, a ruling, a factual and legal justification, an advisory notice as to whether and how an appeal may be brought and the signature, name and position of the person authorised to issue the decision. Any decision which may be challenged by a petition to the civil court or a complaint to the administrative court should contain an advisory notice that such a petition or complaint may be brought.
§ 2. Other regulations may contain other elements which a decision should contain.
§ 3. The factual justification of the decision should contain the facts that the body regards as proven, the evidence relied upon and the reasons for which other evidence has been treated as not authentic and without probative force. The legal justification should contain the legal authority for the decision with reference to the relevant law.
§ 4. If the decision fully reflects the demands of the party then there is no need to provide a justification for the decision, but this does not apply to decisions in contentious cases and decisions given on appeal.
§ 5. A body can also dispense with a justification of a decision in such cases if under current statutory regulations there is a possibility of dispensing with or limiting the justification because of the interests of State security or public order.

The Court ruled that the PPO should make a thorough analysis of the concept of “technical character of the invention” and should indicate why it interprets it very narrowly, taking in this respect the view of the EPO. The PPO should also consider whether the European patent has been granted for the same solution, and examine the merits of different assessment of the invention in Poland. During the re-hearing of the case the PPO will will take the position whether the applied solution has been sufficiently disclosed, and if so, only then will further examine its patentability, given that one of the elements of assessing the patentability of the invention is a technical solutions. Due to the lack of legal definition of a “solution of a technical nature” in assessing a technical nature of the present invention the PPO is obliged to indicate what in the opinion of the PPO is deemed as “technical solution”. The PPO will assess the technical nature of the claimed invention and will refer to the applicant’s arguments, if the interpretation of that concept made by the PPO would continue to differ on how this concept is understood to the applicant.

Trade mark law, case VI SA/Wa 1144/08

October 17th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 25 September 2008 case file VI SA/Wa 1144/08, published in LEX under the no. 513878, held that the descriptiveness of a trade mark is the sole and direct information which indicates the characteristic of the goods. The signs are not deemed as descriptive if in only through indirect conclusion can be considered as a determination of such features. This case concerned the examinations proceedings of the trade mark telepizzeria Z-284471 that was applied for by the Polish company BONO A. MAZUREK Spółka Jawna for goods and services in Classes 29, 30, 31, 32, 35 and 43.

Trade mark law, case II GSK 1022/08

September 11th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 19 June 2008 case file VI SA/Wa 278/08 dismissed a complaint on the decision of the Polish Patent Office on the refusal to grant the right of protection for “clim PUR” Z-270334 trade mark applied for the goods in class 3. VALEO SERVICE société par actions simplifiée filed a cassation complaint.

R-221567

The Supreme Administrative Court in its judgment of 3 June 2009 case file II GSK 1022/08 held that the Court is not alone entitled to precise (supplement or refine) of the allegations included in the cassation complaint, or making hypotheses in this regard, sanctioning so to say its deficiencies. The interpretation of the scope and direction of a complaint is also not permissible, because the cassation appeal should be drafted in a such way that there would be no questions of its interpretation.

Trade mark law, case VI SA/Wa 1524/08

December 26th, 2008, Tomasz Rychlicki

The Polish Patent office invalidated the right of protection for NIZOPOL R-152880 trade mark owned by Zakłady Farmaceutyczne “POLFA-ŁÓDŹ’ Spółka Akcyjna. The request was filed by Johnson and Johnson Company who owns NIZORAL R-57978 trade mark. The PPO held that both signs are similar and share at the beggining the same 4 letters NIZO.

The Voivodeship Administratve Court in Warsaw in its judgment of 26 November 2008 case file VI SA/Wa 1524/08 invalidated the questioned decision and ordered its re-examination. Although the Court shared the view of the PPO that during the examination of the questioned word marks in the aural apect, the more attention should to be paid to the first letters and syllables, and a very small role of the endings of words should be recognized, citing J. Piotrowska, Renomowane znaki towarowe i ich ochrona (in English: Reputed trade marks and their protection), Wydawnictwo C.H. Beck, Warszawa 2001, p. 131, however, according to the VAC, the PPO did not consider at all the issues related to the degree of public attention. According to the VAC, even the ordinary and final recipient (and not only the professional) when during the purchase of products such as pharmaceuticals or cosmetic can be extremely careful in selecting the correct product because the product purchased is not the regular goods, but one that will (or may) have some consequences for his health. The recipient will also be a more likely with a similar purchase to seek and take into consideration the advice of an expert. A prudent consumer should pay particular attention to the name (and thus the mark) when purchased.

The PPO did not also made in this case, any assessment of other important factors affecting the risk of confusion, namely, did not address the issues related to the alleged occurrence in the course of trade any other similar signs/designations containing the prefix “nizo”. The PPO have to respond to arguments and the circumstances showed by the Polish company, since it is argued the legal doctrine, that the use of the same or similar trade mark by third parties could lead to a weakening of the impact of such sign, and thus – to reduce the risk of confusion, citing R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 91.

In this situation – according to the Court – it must be assumed that the PPO during the re-examination of the case should first consider the question of the similarity of the goods. The VAC noted that according to settled case-law, the assessment of the similarity between the goods or services should take into account all relevant factors relating to those goods or services. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary, citing T‑420/03, El Corte Inglés, SA v. OHIM.

In the opinion of the Court when re-considering the issue again with regard to the risk of misleading consumers, the Patent Office will be obliged to consider how the risk of confusion is likely to affect the power of the effectiveness (common knowledge) of the opposed earlier mark, in the light of the model of the average consumer that was established in the Community case-law. In this situation the PPO should also consider the issue of the possible risk of confusion, taking into account the intened use of both signs.

Procedural law, case II GSK 350/06

November 24th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 18 April 2008 case file II GSK 350/06 held that the duties of the Polish Patent Office to take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public cannot be “transferred” to the litigation proceedings in patent cases based on the provisions of Article 256(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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.

Article 256
1. The provisions of the Code of Administrative Procedure shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by this Law..

2. To costs of proceedings the provisions applied in civil law proceedings shall apply accordingly.

3. The provisions of the Code of Administrative Procedure governing re-examination, at a party’s request, of cases, in which decisions not liable to appeal were taken, shall not apply to decisions on merits taken after hearing.

3¹. The cases referred to in Article 2553(2) may be requested to be re-adjudicated. A time limit for submitting a request shall be, in case of a decision made – two months and in case of an order issued – one month from the date of the decision or the order being served upon the party.

4. (repealed)

This is because the Article 255(4) of the IPL includes provisions that fully cover this regulation and precludes the possibility of the complementary use of provisions of Article 7 and 77 of the 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.

Article 255
4. The Patent Office shall settle cases in litigation procedure within the scope of the request and shall be bound by the legal ground invoked by the requesting party.

The Court also ruled the such findings do not preclude, of course, the activity of the Polish Patent Office to collect evidence, provided that they fall within an already pending case in litigation proceedings.

Trade mark law, case II GSK 332/08

October 14th, 2008, Tomasz Rychlicki

On December 1999, Polish company Top Choice Agata Murawska has applied for trade mark registration for word mark WINNER and word-figurative sign W WINNER in Class 21 for goods such as combs, hair brushes and other products and in Class 29 for rollers. In 2003, The Polish Patent Office granted the right of protection respectively R-148543 and R-148540.

R-148540

The Company Inter Vion SA from Warszawa decided to invalidate aforementioned registrations claiming that those trade marks are the company name (the firm) of Tong-Fong Brush Factory Co. Ltd., from Taiwan which is one of the biggest producers of brushes, combs and mirrors (60 milions of pieces produced in 2000). The WINNER sign, although not registered, was used by Taiwanese company since 1997 on the Polish market. The Company from Taiwan presented an offer involving a series WINNER products to several of Polish companies, including Inter Vion and Top Choice. Since 1998 Top Choise has imported the above-mentioned accessories bearing WINNER trade mark, first by intermediaries, and since 2000 directly from the Taiwanese company. InterVion has signed its first importation contract for WINNER products in 1999. The company has presented first images of these goods in its directory of 1999/2000. During invalidation proceedings before the Polish Patent Office InterVion has alleged that Top Choice, by registering the disputed marks, tried to gain a monopoly on the importation of products.

The PPO invalidated WINNER and W WINNER trade marks in its decision of 4 October 2006, act signatures Sp. 119/05 and Sp. 46/06. The Voivodeship Administrative Court in Warsaw has dismissed Top Choice’s appeal complaints in its judgments of 27 August 2007, case files VI SA/Wa 114/07 and VI SA/Wa 115/07. Top Choice filed a cassation complaint before the Supreme Administrative Court claiming that VAC erred in its findings and violated the administrative procedure rules.

The Supreme Administrative Court in its judgment of 8 October 2008 case file II GSK 332/08 dismissed the cassation and based its arguments on procedural errors included in Top Choice’s complaint which in Court’s opinion lacked proper claims’ construction. However, SAC also held that company who registered other company’s name as a trade mark acted in bad faith which was a sufficient circumstance to declare invalidation of such trade mark by the PPO.

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

June 9th, 2008, Tomasz Rychlicki

The Company 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 1626/05

June 8th, 2008, Tomasz Rychlicki

Toyota Corp. filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection for lexus R-140774 trade mark that was registered for Lubuska Wytwórnia Wódek Gatunkowych “POLMOS” w Zielonej Górze for goods in Class 33 such as alcohols. Toyota argued that this registration was made in bad faith as parasitic use of the reputation of its renown trademarks. The PPO dismissed the opposition and Toyota filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 13 March 2006 case file VI SA/Wa 1626/05 overturned the questioned decision and held it unenforceable. The VAC ruled that the reputation of a trade mark means nothing more than its attractive strength, the value of advertising and generally positive perceptions of consumers. The protection of reputed trade marks may occur outside the similarity of the goods. Furthermore, as it was noted in the judgment of the Voivodeship Administrative Court of 8 November 2005, case file VI SA/Wa 845/05, the reputation of a trade mark is not dependent on the borders of countries or regions.

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 320/05

August 14th, 2007, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 19 January 2006 case file II GSK 320/05 ruled that the litigation proceedings, conducted on the basis of the provisions of Article 255 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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, have the adversarial nature. This means that the parties of the proceedings should cite evidence to support their claims. However, it should not be interpreted as meaning that the administrative body retains in complete inactivity during the proceedings. The administrative body is required to explain all the facts under the provisions of Article 7 and 77 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, published in 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. This requirement should be understood that the initiative for setting up the arguments and the presentation of evidence rests on the parties, especially if it is acting with a representative. The role of the administrative body has the complementary nature.

Trade mark law, case II GSK 210/06

December 29th, 2006, Tomasz Rychlicki

On 11 July 2000, the Polish Patent Office has granted the right of protection to Zakłady Farmaceutyczne Polfa-Łódź Spółka Akcyjna for word trade mark “calcium c” R-122184 for goods in Class 5 such as pharmaceutical products. On 25 May 2001, the PPO received a requested for the invalidation of “Calcium C” R-122184 trade mark. The applicant was arguing that the questioned sign does not have a distinctive character. According to the applicant, the term “calcium” and “c” represent information about the properties and composition of the product bearing the mark.

The PPO in its decision of 11 February 2005, invalidated the right of protection for “Calcium C” R-122184. The PPO claimed that the word of calcium derived from the Latin and has no distinctive character, i.e. it is an informational sign, which should be available to all entrpretanours performing economic activity. While referring to the possibility of acquisition of secondary meaning the PPO held that the owner did not provide any evidence on this circumstance. The PPO considered that the mere fact that the company made a substantial investments in product advertising, or show significant sales, does not constitute itself a secondary meaning. Polfa-Łódź filed a complaint against this decision

The Voivodeship Administrative Court in its judgment of 20 February 2006 case file VI SA/Wa 1730/05 upheld the decision of the PPO. The VAC agreed that “Calcium C” does not have distinctive character. The Court stated that the sign is devoid of any fanciful elements, purely informational – indicating that the product is a calcium with vitamin C. The VAC ruled that in the interest of manufacturers of the pharmaceutical products is the exclusion of such signs from the registration, otherwise one individual entrepreneur could monopolize the use of these signs and that would lead to serious and unjustified restrictions on the activities of other entrepreneurs. Polfa-Łódź filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 December 2006 case file II GSK 210/06 found the appeal well-founded. The SAC held that there was a breach of procedrual provisions because the VAC did not explain and did not consider the impact on the outcome of the case of studies of public opinion, indicating the market share of the disputed product labeled with “calcium c” trade mark and the size of the expenditures on the promotion and marketing. The VAC restricted itself to general statements. It was assumed that for obtaining a secondary meaning the products labeled with “calcium c” must be marketed and available to buyers (the actual use of the trade mark). There was no doubt that this condition for the product bearing “Calcium C” trade mark has been met. However, the SAC noted that is has to be remembered that a trade mark acquires distinctive character as a result of its use only when a sign is able to identify the goods as originating from a particular entrepreneur. Undoubtedly for the SAC the facts in this case were not examined in detail and exhaustive.The Court ruled that the administrative proceedings that concerns the invalidation of the right of protection does not exclude the duty of the administrative body (the PPO) to take all necessary steps to clarify the facts of a case and to resolve it and to comprehensively collect and examine all evidential material, although the burden of proof rests on the one who has the legal interest.

In the legal literature and case-law, it is considered that the typical descriptive signs are in fact components of the goods, even if the indication is only a basic (essential) component, for example, “sand” for the cosmetic agent, which is an essential component. The Court cited W. Włodarczyk, The distinctive ability of a trade mark, Lublin 2001, pp. 199-200. The informational character of a trade mark is not changed when someone is using a sign from foreign language, even in case of terms that come from a dead language (e.g. Latin), when it concerns the professional, or a part of the general Polish vocabulary. The Court concluded that in any case, it would not have been justified to say that the fact that a sign contains information about the composition of a product, a limine precludes its recognition as a fanciful and bars the opportunity to register it as a trade mark, especially since it is possible to acquire secondary meaning.

Trade mark law, case II GSK 349/05

March 23rd, 2006, Tomasz Rychlicki

Imperial Tobacco requested the Polish Patent Office to invalidate the right of protection for “KIERY A K D mocne” R-131390 registered for GALLAHER POLSKA Sp.z o.o., for goods in Class 34 such as cigarettes.

R-131390

Imperial Tobacco is the owner of the right of protection for “M mocne” R-68755 trade mark registered for goods in Clss 34 such as cigarettes. The PPO dismissed the request and explained that the Trade Marks Act contains no provisions on the so-called disclamation rule which is based on identifying which elements that are part of a registered trade mark should not be protected and deemed as informational sings/elements. The word “mocne” (in English: “strong”) refers to the characteristics (properties) of cigarettes, which is associated with the fact that strong cigarette contains more tar and nicotine than light cigarette. The M-Mocne brand due to the presence in the market for several decades acquired the status of well-known trade mark among smokers, which according to the assesment of the Polish Patent Office does not change the fact that “mocne” sign is deemed as the informational term. Imperial Tobacco filed a complaint against this decision.

The Voivodeship Administrative court in warsaw in its judgment of 20 January 2005 case file VI SA/Wa 333/04 agreed with the PPO and dismissed the complaint. The VAC held that it is wrong assumption that the use of the registered word-figurative trade mark “M mocne”, resulted in obtaining the status of well-known trade mark of one of its elements, i.e. “mocne” word. Imperial Tobacco filed a cassation complaint.

The Supreme Administrative Court in its judgment of 26 January 2006 case file II GSK 349/05 held that the word “mocne” lacks sufficient distinctiveness. Therefore, the right to use this term (as well as “lekkie”) have all manufacturers of tobacco/cigarettes. This does not affect the personal or property rights, because the word is not property. Moreover, the Court noted the term “mocne” can never acquire distinctive character and all the time should be considered as an informational indication.

Procedural law, case III SA 729/84

June 24th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 7 December 1984 case file III SA 729/84, published in ONSA 1984 No 2 item 117, stressed that in order to implement the principle of Rule of Law, it is necessary first of all, strict adherence to the law, particularly with regard to clarify the exact circumstances of the case, to respond to specific requests and arguments of a party of the proceedings. The Administrative authority is also obliged take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public. The public administration body is also required to comprehensively collect and examine all evidential material. The public administration body should assess whether a given circumstance has been proven on the basis of the entirety of the evidential material and the factual justification of the decision should contain the facts that the body regards as proven, the evidence relied upon and the reasons for which other evidence has been treated as not authentic and without probative force. The legal justification should contain the legal authority for the decision with reference to the relevant law.