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Archive for: Polish Administrative Proceedings Code

Trade mark law, case II GSK 668/08

March 28th, 2009, Tomasz Rychlicki

On 25 January 2005, Société des Produits Nestlé S.A. applied to register the word trade mark CHOKELLA Z-290315 in Class 30, for goods such as: breakfast cereals, muesli, corn flakes, cereal bars, cereal flakes, cereal preparations, food products based on rice, flour or cereals, also in the form of ready-to-use meals. Nestlé was aware that there is a possiblity that the Polish Patent Office rejects the application because of the earlier registration of the trade mark CHOKELLA R-85159, registered with priority on 30 August 1993 for the Company Kelsen The International Bakery A/S from Norre-Snede, which during Nestle’s application was under the grace period based on the provisions of Article 132(1)(iii) 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.

2. A right of protection for a trade mark shall not be granted, if the trade mark is:
(iii) a trade mark earlier registered in the Republic of Poland, whose registration has terminated, provided that an interval between the date of lapse of the right of protection for the trade mark and the date on which a similar trade mark has been applied for by another party, is, subject to Article 133, no longer than two years.

On 3 February 2005, Nestle filed before the PPO a request for a declaratory decision which would affirm the lapse of the right of protection for the trade mark CHOKELLA R-85159, because of its non-use. According to Nestle, the declaratory decision should be effective from the date when an event which involves the effect of the expiry occured, i.e., at the date when the 5-year time period of non-use of a trade mark expired.

On January 2006, The PPO, dismissed the proceedings on the grounds that it was pointless, since before the date of Nestle’s request the rights of protections for CHOKELLA trade mark expired on 30 August 2003, under the law, due to the failure to extend the protection for the next ten years. It was unacceptable for the PPO to decide on the lapse of the rights of protecion for a trade mark, which did not exist at the date of application for such declaration. The PPO indicated that Nestle’s request was filed almost two years after the expiry of the CHOKELLA trade mark, so dismissal of the proceedings was justified because of the lack of subject that would be suitable for a substantive judgment. The PPO ruled that the right of protection shall expire on the date of the decision with effect from the date of filing a request to declare the right of protection for the trademark lapsed. So the decision has a constitutive nature and is applicable ex tunc. The PPO did not agree with Nestle’s argument, and the construction and interpretation of the provisions of Article 169(2) of the IPL.

The Patent Office shall make a decision on the lapse of the right of protection for the trade mark at the request of any party having a legitimate interest therein.

The PPO decided that this prejudge the declaratory nature of the decision on the lapse of the rights of protection and it differs from the provisions afforded in the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

Article 25.
The right deriving from registration of a trade mark shall lapse:
(i) on expiry of the term of protection;
(ii) on relinquishment of the right by the person entitled under the registration of the trade mark;
(iii) on failure to use the mark;
(iv) on loss of sufficient distinctiveness of the trade mark;
(v) on termination of economic activity on the part of the owner of the right deriving from registration of the trade mark.

Article 26.
In those cases referred to in section 25, items ii) to v), the Patent Office shall cancel the right deriving from registration of the trademark.

Article 30.
(1) Any person having a legitimate interest may submit a request for confirmation of lapse or a request for annulment of the right deriving from registration of a trade mark.

In the PPO’s opinion the provisions of article 169(2), beside different nomenclature of institutions (i.e. registration rights in the TMA and the rights of protection in the IPL), are identical and, even if the TMA did not indicate the date on which the lapse of registration rights or rights of protection, the legal doctrine and the case-law have established a method of calculating such date based on a specific event, for which it is considered the date of filing the request before the Patent Office to decide on the lapse of the right of protection for the trade mark.

Nestle filed a complaint before the Voivodeship Administrative Court in Warsaw, and argued that, contrary to the PPO findings, the IPL quite differently regulates the rules of declaration on the lapse of the right of protection for the trade mark. The Office shall issue a decision on the lapse of the rights of protection for trade mark and the provisions of Article 169(2) of the IPL indicates clearly that the decision is a declaratory act with a constitutive effect, that is, the decision itself, does not abolish the rights, but merely states that the right is expired under the law, which has effect for third parties from the time it was decided.

The Voivodeship Administrative Court in Warsaw in its judgment of 12 December 2007 case file VI SA/Wa 791/07 dismissed the complaint. The Court agreed with the PPO’s findings. Nestle filed a cassation complaint before the Supreme Administrative Court.

The Supreme Administrative Court in its judgment of 21 January 2009 case file II GSK 668/08 annulled the ruling of the Voivodeship Administrative Court. First, the Court noted that the Supreme Administrative Court in its judgment of 23 April 2008 case file II GPS 1/08 held that according to the provisions of Article 169(1)(i) of the IPL, the date of lapse of the right of protection for a trade mark is set on the last day of a period of five successive years, counting from the first date of non-use. See also “Trade mark law, case II GPS 1/08“. The SAC ruled that aforementioned judgment can not be excluded from the examination of the matter of Nestle’s complaint. According to the Court, it is accurate and consist of compelling arguments that are sufficient to answer the question formulated in Nestle case. The Court held that the similarity of the nature of “industrial property” within the meaning of property in the civil law context is in the exclusive use of goods that are understood as property, the beneficial use and disposal of such goods. However, the industrial property differs because its formal nature that is resulting from the relationship with a decision on granting the rights of protection, invalidation and the lapse of rights of protection. The decision to grant the rights of protection for a trade mark mark is clearly a constitutive act creating the legal status for a person. Declaratory decisions can not determine the occurrence of the new legal situation, but must refer to another fact or event occurring earlier in time and combine them with the rights or duties of the entity (legal or natural person). The vague regulations of the TMA encouraged the formulation of views on the constitutive nature of the decision on the lapse of the registration rights of a trade mark under article 26 and 30 of the TMA. The SAC did not agree with two separate opinions issued by judges who were appointed to decide in case II GPS 1/08 and article written by professor Ryszard Skubisz and Marcin Trzebiatowski in which the authors provided examples on declaratory and constitutive nature taken from family law or labour law. According to the Court, the difficulties arise when the vague provisions of formal law create the need for an interpretation if, in connection with the answer to the question of when and on what basis (fact, event, operation), the decision has constitutive or declaratory nature. It was incomprehensible for the SAC to give the examples of judgments of nullity of marriage or fatherhood, the effects of which can not be transferred by the declaratory act on the life of the party in the family and the society. The Court held that similarities between industrial property and the instutution of the property taken from the civil law (property and ownership of tangible goods) should be taken into account to justify the recognition of decision on the lapse of the rights of protection as declaratory one instead of the principles of family law. The Court analyzed the nature of such decision in the scope of the property law rules i.e. the acquisition of property (perpetual use of the property or servitude of the ground) is decided by the declaratory ruling of the civil court following the expiry of the last day of the period when such possession is required by the formal law. The SAC also stated that the day of filing the application for declaration on lapse of the rights of protection does not affect the date of expiry of the right, because it is initiating administrative action on the request of the parties. Whether and when the rights of protection shall lapse should be declared by the findings made during the proceedings for the purposes of the law.

Polish patent attorneys, case III CZP 118/08

January 29th, 2009, Tomasz Rychlicki

The Supreme Court in its judgment of 23 January 2009 case file III CZP 118/08 held that an advocate, legal advisor or patent attorney who is acting as a substitute representative cannot authenticate a copy of the basic power of attorney that was issued in the name of the primary proxy. The court also ruled that the defect in form of a pleading based on improper form of powers can be removed by a confirmation of a party that issued the primary POA. The court should assign the other party a reasonable time limit for supplementation of a pleading and POA.

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.

Access to public information, case II GSK 459/07

August 7th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 20 March 2008 case file II GSK 459/07 held at the begining of judgment’s justification that administrative decisions are public information within the meaning of article 1(1) of the API and may be disclosed, in accordance with 6(1) pt 4 letter a, first tiret of the API. According to the SAC, after completion of the application proceedings, including any inter partes proceedings, article 251 of the IPL will no longer be applicable, and access to case files will be based on the general provisions of the API. Pursuant to article2(2) of the API, the Authority cannot require to prove legitemate or factual interest from the person entitled to a right to public information.

The Court also held that not all documents from the case file should be considered public information. Such nature have only official documents. Pursuant to article 6(2) of the API, an official document within the meaning of the Act is the content of the declaration of will or knowledge, recorded and signed, in any form by a public official under the provisions of the Penal Code, within its competence, that is addressed to another entity or put to the file.

Procedural law, case VI SA/Wa 2091/07

June 27th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 20 March 2008 case file VI SA/Wa 2091/07 held that the restoration of a deadline/time limit is an institution aimed at protecting individuals against the consequences of failure to fulfill the term. It applies only to procedural time limits and to deadlines to perform proper actions in the proceedings, for example, the deadline for lodging an appeal. Article 252 of the IPL excluded the application of the provisions of the APC in matters governed by the IPL.

Article 252
Subject to Article 253, the provisions of the Code of Administrative Procedure shall apply accordingly to cases not regulated by this Law.

The Court ruled that it is possible for a party to file a request for the re-examination of the case even if that case ended with the decision that has beneficial consequences for the requesting party. In the opinion of the Court there are no provisions forbidding to challenge decisions favorable to the party. See also “Procedural law, case VI SA/Wa 934/10“.

Trade mark law, case VI SA/Wa 517/08

June 20th, 2008, Tomasz Rychlicki

The recent judgment of the Voivodeship Administrative Court (VAC) in Warsaw of 6 June 2008, case act signature VI SA/Wa 517/08 acknowledged that the Nice Classification should be used as an auxiliary tool to decide about of the same kind of goods which is also in the accordance with article 2(1) of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

Subject to the requirements prescribed by this Agreement, the effect of the Classification shall be that attributed to it by each country of the Special Union. In particular, the Classification shall not bind the countries of the Special Union in respect of either the evaluation of the extent of the protection afforded to any given mark or the recognition of service marks.

HIRSCH-POL Sp. z o.o., filed before the Polish Patent Office (PPO) a request for partial cancellation of the trade mark rights for PRYMUS R-144135 trade mark owned by Krzysztof Moska and registered for classes 01, 02, 04, 16, 17, 19, 35 and 39. HIRSCH-POL Sp. z o.o. was claiming the priority of an earlier registered trade mark PRYMUS R-136008 in class 2. The PPO dismissed the request. HIRSCH-POL logged a complaint to the Voivodeship Administration Court in Warsaw.

The Court overruled the contested decision, finding that the PPO did not establish the scope of a protection for the PRYMUS sign and the Nice Classification is only an auxiliary tool to decide whether goods are of the same kind. Following the judgment, the PPO cancelled Moska’s trade mark in classes requested by HIRSCH-POL. This time Mr Moska lodged a complaint before the VAC, claiming violation of administrative procedure’s rules and violation of the rule of “certainty and confidence of State’s bodies”. The Voivodeship Administration Court in Warsaw held that the contested sign may lead to consumers’ confusion with regard to the origin of goods and that its previous conclusions which applied to the Nice Classification were correct.

Procedural law, case SA/Wr 1843/95

June 13th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its decision of 17 November 1995 case file SA/Wr 1843/95 ruled that according to the provisions of Article 28 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, shows clearly that the concept of a party of the proceedings is associated with the legal interest that is interpreted of the indicated administrative regulation of substantive law, which may form the basis for the interest or obligation of given entity. The Court noted that to have a legal interest in the administrative proceedings means the same as to establish a provision of the current law in force, under which the activities of the authority can be effectively requested with the intention of satisfying a need or demand or the cessation or restriction of actions of the authority that are contrary to the needs of the individual. Such a legal interest should be distinguished from the so-called real interest, which is deemed as a situation in which a person is indeed directly interested in settlement of administrative cases, but it can not support its interest based on the currently binding legal regulations which could form the basis for a request to the relevant administrative body. In this case, that person is not entitled to be a party in the administrative proceedings.

Categories: Art. 28 APC | legal interest | Polish Administrative Proceedings Code | Polish Supreme Administrative Court.

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.

Patent law, case VI SA/Wa 2091/07

May 12th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 20 March 2008 case file VI SA/Wa 2091/07 ruled that the request for restitution of a term to file a request on rehearing is subject to article 58 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 58.
§ 1. If the deadline is infringed it may be rescheduled at the request of an interested party if it appears probable that the infringement was not caused by that party.
§ 2. A request to reschedule the deadline should be made within 7 days of the reason for the deadline’s infringement coming to an end. However, the actions for which the deadline was set must be carried out simultaneously with the request being made.
§ 3. It is not possible to reschedule the deadline for making the request referred to in § 2.

However, provisions of article 243(1) deals with the time limits set by the Polish Patent Office, while the deadline for The request for restitution of a term to file a request on rehearing is a term defined in the APC.

Article 243
1. Unless otherwise stipulated in this Law, where in the course of proceedings a time limit to perform an act requisite, under this Law, for continuance of the proceeding has not been observed, the Patent Office may, at the party’s request, restore the time limit, provided that the party provides a plausible explanation that non-observance was without fault on its part.

2. Subject to paragraph (4), the request referred to in paragraph (1) shall be submitted to the Patent Office within two months from the date on which the reason for non-observance has ceased to exist, however not later than within six months from the date of the expiry of that time limit. At the same time, the requesting party shall be required to perform the act in respect of which the time limit was fixed.

3. A time limit to submit the request referred to in paragraph (2) shall not be restorable.

4. Where a decision has been taken on discontinuance of the proceeding for the reason of failure to observe a time limit for performance of a specified act, that decision, at the party’s request for re-examination of the matter, may be reversed, provided that the party provides in the request a plausible explanation that the non-observance was without fault on its part, while performing, at the same time, the act in respect of which the time limit was fixed.
5. Where the time limit for filing an application for the purpose of preserving the right of earlier priority or the time limit for furnishing a document expires on a day on which the Patent Office is closed to the public, the application or the document received on the first subsequent day on which the Patent Office is open to the public shall be deemed to have been received within the time limit concerned.

6. In respect of time limits, to which paragraph (1) is not applicable, and the non-observance of which has been caused by exceptional circumstances, the provisions on suspension of the course of negative prescription caused by acts of God shall apply accordingly. In such cases, the Patent Office shall give orders after having been furnished with relevant evidence by the interested party.

7. Notwithstanding the provisions of paragraphs (5) and (6), the Patent Office shall secure the reception at any time of day of letters delivered by interested persons.

The fact that this applies only to time limits set by the PPO is showed in wording of article 243(2) of the IPL. This whole provisions of article 243 of the IPL apply only to certain categories of terms. This limitation results from the wording of this provision.

Categories: Art. 243 IPL | Art. 58 APC | patent law | Polish Administrative Proceedings Code | Voivodeship Administrative Court.

Trade mark law, case II GPS 1/08

April 23rd, 2008, Tomasz Rychlicki

The Polish Supreme Administrative Court has been asked the following important question: should the date of lapse of the right of protection for a trade mark be the last day of a period of five successive years as mentioned in Article 169(1)(i) 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 Dziennik Ustaw (Journal of Laws) of 2001 No 49, item 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, item 1117, with subsequent amendments, or the day when the motion to declare the expiration of trade mark rights was filled, if the period of five successive years of non-use of a registered trade mark was longer then five years?

1. The right of protection for a trade mark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years, unless serious reasons of non-use thereof exist;

The Supreme Administrative Court in its judgment of 23 April 2008, case file II GPS 1/08 held that according to Article 169(1)(i) of IPL, the date of lapse of the right of protection for a trade mark is set on the last day of a period of five successive years, counting from the first date of non-use.

Trade mark law, case II GSK 309/07

March 30th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 March 2007, case file VI SA/Wa 1998/06 ruled that the source of legal interest to seek a declaration on the lapse of the right of protection for a trade mark may be general rules of law that create the right of establishment of business activity (article 20 and article 22 of the Constitution of the Republic of Poland). However, any person requesting the Patent Office to make a decision on the lapse of the right of protection for the trade mark must prove, on pain of dismissal of such application, that the disputed trade mark limits business activity of an applicant, or it has negative impact the legal situation of the applicant. This case concerned ION R-110244 and ION WEST R-11020 trade marks.

The court deciding this case was aware that divergent views on the subject of legal interests are presented both in the legal doctrine and the case-law. One part of the legal doctrine and practising lawyers believes that a lack of legal interest justyfies the issuance of a refusal based on the formal reasons, and another part’s view is that in this case, the PPO should take the decision to discontinue the proceedings. The court cited the judgment of the Supreme Administrative Court of 7 September 1989, act signature SA/Ka 441/89 and its critical gloss written by Barbara Adamiak, published in OSP 1991/2/33.

The Supreme Administrative Court in its judgment of 25 January 2008 case file II GSK 309/07 ruled that the request for a referral to the Court of Justice regarding the question whether the article 12(1) of First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks allows Member States to introduce into the national law an additional substantial prerequisite regarding the legitimate interest, limiting the class of persons allowed to seek for a declaration on the lapse of the right of protection for a trade mark that was failed to be put to genuine use to those who are able to demonstrate their interest and depriving such possibility the business entities having the actual interest, including economic one, is unfounded.

Trade mark law, case VI SA/Wa 1180/07

December 13th, 2007, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 5 November 2007 case file VI SA/Wa 1180/07 decided the case for the invalidation of the right of protection for the trade mark PANORAMA TURYSTYKI R-145420. The issue of the discontinuance of the proceedings appeared during the hearing before the Polish Patent Office. The PPO decided to stay the proceedings until the civil court decide on the authorship of the trade mark. One of the parties filed a complaint against this decision. The Court ruled that the decision on the matter of who has the copyright to the sign in question is a preliminary issue within the meaning of Article 97 § 1 pt 4 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.

Article 97. Compulsory stay
§ 1. A public administration authority shall order a stay of the proceedings:
1) in case of the death of one of the parties if it is impossible to summon heirs of the deceased party to participate in the proceedings, and if no circumstances described in Article 30.5 occurred, and if the proceedings may not be discontinued as groundless (Article 105),
2) in case of death of the statutory representative of a party,
3) in case a party or his statutory representative loses the capacity to enter into legal transaction,
4) if deciding the matter and issuance of the decision is conditioned upon a previous resolution of a preliminary issue by another authority or court.

§ 2. If the grounds for stay have ceased to exist, the public administration authority shall ex officioor upon demand of a party lift the stay of the proceedings.

The Court held that the PPO was allowed to summon the party to apply for the civil proceedings and to order a stay of proceedings in one order. Such order is not subject to the appeal. It can be only challenged in the complaint against the decision that also contains the conclusions of preliminary issue.

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“.

Procedural law, case II SA/Po 37/09

October 12th, 2007, Tomasz Rychlicki

The Voivodeship Administrative Court in Poznań in its judgment of 15 July 2007 case file II SA/Po 37/09 held that for the effectiveness of the application for the restoration of a time limit in case of failure to comply with the time limit, it is necessary to bring this application to the competent authority within 7 days from the date the cause of failure to comply has expired.

Categories: Art. 129 §2 APC | Art. 57 APC | Art. 58 APC | Polish Administrative Proceedings Code | Voivodeship Administrative Court.

Trade mark law, case II GSK 113/07

October 6th, 2007, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 20 September 2007 case file II GSK 113/07 held that the administration body can change its opinion on the content of the proper conclusion, which should be issued in a specific type of cases, but it must carefully justify such a change, especially when changing the view of decisions taken in relation to the same applicant.

R-146742

The Court ruled that the case-law of the administration may therefore be subject to change, if the authority demonstrates in detail that there are reasonable grounds. This case concerned BROWN DD KING R-146742 trade mark owned by INTER SOUND Spółka z o.o. from Warszawa.

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.

Polish patent attorneys, case III CZP 14/06

June 29th, 2006, Tomasz Rychlicki

The Supreme Court in its judgment of 30 March 2006, case file III CZP 14/06, held that a legal advisor who makes the first procedural step and is acting as a representative of legal person, should under the pain provided in the law, attach power of attorney and a document showing that a person, for instance a CEO, who empowered the adivisor had all required powers to issue such POA. The evidence of such powers can be a copy of an extract from appropriate register of commercial companies that was authenticated by a legal advisor himself.

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.

Copyright law, case P 10/03

January 17th, 2006, Tomasz Rychlicki

The Constitutional Tribunal in its judgment of 21 November 2005 case file P 10/03 held that the approval or denial of approval of the remuneration scales (remuneration tables/fees) for the exploitation of collectively managed works or artistic performances, by the Copyright Commission, is a decision within the meaning of the Code of Administrative Proceedings. This decision is a individual decision, addressed to a particular entity, i.e., in the case of a particular organization for collective management of copyright, which submitted the remuneration scales for approval. The Tribunal ruled that even such a decision is addressed to an individual, the remuneration scales (tables) contain general and abstract norms that may be applied to contracts that are conducted between a collecting society and a party interested in being a licensee of managed works.

Trade mark law, case II GSK 49/05

June 29th, 2005, Tomasz Rychlicki

The Polish Patent Office in its decision of 10 April 2003 No Sp. 218/01 refused to invalidate the registration of AMBER R-98839 trade mark registered for goods in Class 3 such as bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices and owned by Evyap Sabun,Yag,Gliserin Sanayi Ve Ticaret A.S. from Istambul, Turkey. The request for invalidation was filed by IZIS Kosmetyczno-Lekarska Spółdzielnia Pracy from Warsaw and IZIS decided also to file a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 14 October 2004 case file 6 II SA 3571/03 annulled the questioned decision and ruled that it was made in a breach with procedural law. Evyap Sabun,Yag,Gliserin Sanayi Ve Ticaret A.S. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 11 May 2005 case file II GSK 49/05 ruled that there is no doubt that it’s necessary to refer to the inadmissibility of registration of a trade mark as provided Article 8(1) of the TMA with regard to the content of the trade mark itself. Initially, in legal doctrine and then in case-law, started to develop trends to classify to this provision also with the actions/behavior of a person who applied to register the trade mark, that were characterized by the contradiction with the principles of social coexistence, later replaced with the legislation naming such as “complying with the principles of good manners”, fair trading and good faith , so these are subjective elements. There were not, however, views, or judgments, combining this rule with the conduct of the administrative proceedings, because such understanding is simply unacceptable. The SAC repealed the questioned judgment.

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.