The Voivodeship Administrative Court in its judgment of 21 May 2010 case file VI SA/Wa 173/10 held that the statutory condition for the lapse of the right of protection is intended to eliminate the rights of protection granted to those signs that are not actually used in trade. The grant of the protection for a trademark is associated with the statutory obligation of genuine use of the mark for goods and services for which the trade mark is registered. It cannot be used symbolically, only to maintain the rights of registration. This case concerned the proceedings on lapse of the right of protection for “transpak gotuj ze smakiem” R-129729 trade Mark owned by Grajewski Zbigniew, Przedsiębiorstwo Produkcyjno-Usługowo-Handlowe TRANSPAK from Puszczykowo.
Archive for: Art. 80 APC
Trade mark law, case VI SA/Wa 173/10
July 18th, 2010, Tomasz RychlickiProcedural law, case VI SA/Wa 146/10
May 24th, 2010, Tomasz RychlickiThe 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 RychlickiThe 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 1302/09
November 15th, 2009, Tomasz RychlickiThe Polish Patent Office invalidated the right of protection for “METAL-CHEM” R-138491 trade mark in part for goods in Class 7. The owner Przedsiębiorstwo Wdrażania Postępu Technicznego METAL-CHEM Spółka z o.o. from Gliwice filed a complaint against this decision, claiming inter alia that the PPO refrained from taking evidence from expert witness with regard to homegenity of the goods.
The Voivodeship Administrative Court in Warsaw in its judgment of 13 October 2010 case file VI SA/Wa 1302/09 upheld the contested decision and ruled that the Adjudicative Board of the PPO, consisting of experts and the deciding cases in litigation proceedings may under the Article 84 § 1 of the APC appoint an experts witness to establish the facts on which the Patent Office has doubts, while the knowledge of the Board members is not sufficient.
Article 84
§ 1. If a case requires specialist information, a public administration body may consult an expert or experts for an opinion.
§ 2. An expert shall be excluded from proceedings on the basis of the rules set out in Article 24. The provisions regarding the hearing of witnesses shall also apply to experts.
It follows that the use of an experts witness should be incidental in nature as it was already discussed in by the Voivodeship Administrative Court in its judgment of 20 October 2006, case file VI SA/Wa 1075/06. Thus the PPO has the right but not the obligation, to refer to any opinion and it is also indicated by the optional nature of Article 84 § 1 of the APC. The PPO as a specialized authority that grants rights of protection for trade marks and other industrial property rights under the rule of law, is the only body that verifies under litigation proceedings, whether or not the exclusive right of protection for trademark meets statutory requirements. In this case, the task of the Board was the correct assessment of the similarity of the goods contained in the opposing trade marks, in which both parties used the terms in which the general range of meaning was available and is not misleading.
Trade mark law, case II GSK 1022/08
September 11th, 2009, Tomasz RychlickiThe 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.
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 845/05
June 9th, 2008, Tomasz RychlickiThe 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.
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 RychlickiToyota 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 II GSK 349/05
March 23rd, 2006, Tomasz RychlickiImperial 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.
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 RychlickiThe 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.