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Archive for: Art. 6 CC

Trade mark law, case I ACa 967/08

July 5th, 2009, Tomasz Rychlicki

The Appellate Court in Poznań in its judgmet of 28 January 2009, case file I ACa 967/08 held that after the introduction of goods bearing a trademark on the market, the right of protection is “exhausted”. This follows directly from the provisions of Article 155(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 155
1. The right of protection for a trademark shall not extend to the acts in respect of the goods bearing that trademark consisting, in particular, of offering the goods or further putting on the market the goods bearing that trademark, where the said goods have earlier been put on the market on the territory of the Republic of Poland by the right holder or with his consent.
2. The right of protection for a trademark shall neither be considered infringed by an act of importation or other acts, referred to in paragraph (1), in respect of the goods bearing the trademark, if these goods have earlier been put on the market on the territory of the European Economic Area by the right holder or with his consent.

3. Paragraphs (1) and (2) shall not apply, where there exist legitimate reasons for the right holder to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

This means that further market participant has the right to use the trade mark for advertising and information purposes, as long as this does not mislead as to the existence of economic links between the trade mark owner and a person who uses such sign. See also “Trade mark law, case III CK 410/03“.

The Court also ruled that the “pauperization” of a word trade mark means its adoption to the colloquial speech, which involves changing its function from being the name the unit of goods to the description of the species or genus and by enlarging its description on items that are in no way connected with the person entitled to a trade mark. This is usually the result of the existence of the brand for a long time in large areas and of its high popularity and intensive advertising. Such a phenomenon does not limit the exclusive rights of a holder of a registered trade mark and per se does not authorize other entities to use a protected trade mark in their business.

Trade mark law, case II GSK 98/07

July 6th, 2008, Tomasz Rychlicki

On 8 November 2004, the Polish Patent Office received a request from JOOP GmbH on the invalidation of the right of protection for JUUPI! R-103654 trade mark owned by “AQUAREL” Kosiorek Spółka Jawna. The applicant has based its legal interest on the fact that questioned sign is similar to JOOP! R-64463 trade mark, registered on his behalf with an earlier priority, and to international trade mark registration JOOP! IR-739262. The request was based on provisions of Article 165 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 165
1. A request for invalidation of the right of protection shall not be admissible:
(i) on the ground that it conflicts with an earlier trademark or the personal or economic rights of the requesting party have been infringed, where the requesting party has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use,
(ii) after the expiration of a period of five years from the grant of the right of protection, where the right in question was granted in breach of the provisions of Article 129, however in consequence of its use the trademark has acquired a distinctive character,
(iii) on the ground that it conflicts with a well-known trademark, where the party entitled to the well-known trademark has acquiesced, for a period of five successive years of the use of the registered trademark, in the use of the latter while being aware of such use.

2. Paragraph (1) shall not apply, where the holder of the right has acquired the right in bad faith.

The PPO dismissed the request. The Voivodeship Administrative Court in its judgment of 13 October 2006 case file VI SA/Wa 1339/06 rejected the appeal filed by JOOP GmbH and upheld the decision of the PPO. JOOP filed a cassation complaint.

The Supreme Administrative Court in its judgment of 5 July 2007 case file II GSK 98/07 held that “being aware of the use of the mark” means that the applicant, who requested for the invalidation based on provisions of article 165 of the IPL, had knowledge about the use of that trade mark by its proprietor. One cannot extend the scope of this statutory condition for “the possibility” or “the duty” to finding out or getting acquitant that such mark is being used by its proprietor. The Court ruled that it’s impossible to accept the existence of a general legal obligation that could be put on entrepreneurs to “track the competition” in order to be aware of the use of different trade marks on the market.