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Archive for: Art. 22 Constitution

Trade mark law, case II GSK 615/10

September 7th, 2011, Tomasz Rychlicki

Mr Roman Oraczewski Oficyna Wydawnicza PRESS-MEDIA requested the Polish Patent Office to invalidate the right of protection for the trade mark “Sto Panoramicznych” R-102530 owned by TECHNOPOL Agencja Wydawnicza Spółka z o. o. and registered for goods in Class 16 such as magazines. The PPO invalidated this trade mark and ruled that this designation is descriptive and informative, because it is carrying explicit message on the number and type of crosswords included in each copy of the magazine. TECHNOPOL filed a complaint against this decision, but it was dismissed by the Voivodeship Administrative Court in its judgment of 16 February 2010 case file VI SA/Wa 1862/09. TECHNOPOL decided to file a cassation complaint. The Comapny argued inter alia that its trade mark has acquired secondary meaning because TECHNOPOL also used similar signs, for instance “100 panoramicznych” R-102531, which is a modification of the trade mark “Sto Panoramicznych”.

The Supreme Administrative Court in its judgment of 25 May 2011 case file II GSK 615/10 dismissed the complaint and ruled that the use of a sign in order to prove its secondary meaning, can not be documented by the use of other similar designation that is also a separate, registered trade mark.

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.

Unfair competition, case V CSK 192/09

September 28th, 2010, Tomasz Rychlicki

AFLOFARM Fabryka Leków sp. z o.o. from Ksawerów sued two Polish companies for trade mark infringement and unfair competition delict/tort with regard to selling similar pharmaceutical products. This case went through all instances.

Z-307527

The Supreme Court in its judgement of 22 January 2010 case file V CSK 192/09 published in the electronic database LEX, under the no 564857, dismissed the complaint filed by Hasco Lek S.A. and Hasco Lek Dystrybucja. The Court held that the specificity of the market’s segment in which the magnesium preparations are sold, and which boils down to the fact that the same or very similar products gains the advantage of customers, through its specific name and advertising of such product and its packaging, requires greater care when introducing a new product of a very similar name and packaging, because it cannot mislead consumers, and it cannot take away consumers from another producer.

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“.

Trade mark law, case VI SA/Wa 173/10

July 18th, 2010, Tomasz Rychlicki

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.

Trade mark law, case II GSK 774/08

July 20th, 2009, Tomasz Rychlicki

In June 2005, Societe Des Produits Nestle S.A asked the Polish Patent Office to make a decision on the lapse of the right of protection for “3in 1” R-90234 trade mark owned by “MOKATE” sp. z o.o. from Zory. The request was based on article 28(1) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with later amendments.

The right deriving from registration of a trade mark shall expire if the person entitled has not used the mark within a period of three consecutive years in the Republic of Poland.

The request was also based on article 169(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.

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 after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exist,
(…)
2. In the cases referred to in paragraph (1), 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 request was based on non-use of “3 in 1” trade mark. Mokate filed a motion asking the PPO to reject Nestle’s request. The motion was based on the lack of legitimate interest on Nestle’s side. The PPO agreed with Mokate’s argument. Nestle filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in its judgment of 3 December 2007, act signture VI SA/Wa 1036/07 rejected Nestle’s complaint. The company filed a cassation complaint to the Supreme Administrative Court. The SAC in its judgment of 12 March 2009, act signature II GSK 774/08 held that conditions of legitimate interest are based on two levels — procedural — because it is justifying the initiation of administrative proceedings in a particular matter and “substantive”, as it results from the provisions of the law that apply to certain rights and obligations of a person (legal or natural). Although the substantive law is the source for the legitimate interest but the legal interest as a condition that justfies the initiation of the procedure for declaration on the lapse of the right of protection for the trademark is primarily a category of administrative procedure – one of the principles of this proceedings as to its proper initiation. The cassation complaint was rejected.

The SAC ruled also that it was uncontested that the First Council Directive left Member States free to establish procedural rules. The requirement of legitimate interest included in article 169(2) the IPL only entitles a party to initiate the administrative proceedings on the lapse of the right of protection for a trade mark, but does not guarantee such applicant that the PPO will issue a decision that is favourable to him, because the PPO shall issue a decision on the lapse of the trade mark rights if it finds the fulfilment of the substantial prerequisites to the lapse, and not the infringement of the legitimate interest. Since then the provision of article 169(2) are only applicable only to a right to file a request for a decision on the lapse of the right of protection for a trade mark for the reasons referred to in section 1 of article 169 being the substantial prerequisites, the requirement to demonstrate a legitimate interest can not be understood as an additional substantial prerequisite for deciding on the lapse of trade mark rights. Such assessment is not changed by the fact that, as the court already stated, the legitimate interest is the normative category of the substantive law.

In the Polish administrative law the legitimate interests requirement creates the concept of a proceedings party. This issue has been dealt similarly in the law of industrial property, including a prerequisite to request the Polish Patent Office to take a decision declaring the right of protection for the trade mark.

The legitimate interest prerequisite has two grounds – procedural because it justifies the initiation of the administrative proceedings in a particular case and substantive, because it results from the provisions of substantive law that apply to certain rights and obligations of an entity. Although a source of the legitimate interests lays in the substantive law, the legal interest as a condition requesting the PPO to issue a decision declaring on the lapse of the right of protection for the trade mark lapsed is primarily a category of administrative procedure – one of the principles of this proceeding as to its proper initiation.

The issues on legal interest are both regulated in the procedural law (including the administrative proceedings that apply to trade mark cases) and these are also the normative category of the substantive law. The source of the legal interest is the substantive law. If the source is the substantive law then the Directive should apply. However the SAC consistently refuses to refer this matter to the Court of Justice.

See also “Trade mark law, case II GSK 309/07“.

Trade mark law, case VI SA/Wa 1486/08

June 17th, 2009, Tomasz Rychlicki

On 17 February 2005, Société des Produits Nestlé S.A. from Vevey applied to the Polish Patent Office to register the word-figurative trade mark Frappé Z-291280 for goods in class 30. On August 2005 Nestlé filed a request for invalidation of the right of protection of the FRAPPE R-13842 trade mark, registered for goods in class 30 and 32 owned by Polish company “MASPEX” Spólka z o.o. form Wadowice. Nestlé based its request on provisions of Article 7(2) and Article 8(3) of 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.

(2) A sign shall not possess sufficient distinctiveness if it simply constitutes the generic designation of the product, if it simply makes a statement as to the properties, quality, number, amount, weight, price, purpose, manufacturing process, time or place of production, composition, function or usefulness of the goods or any similar information that does not enable the origin of the goods to be determined

Article 8(3)
A trade mark shall not be registrable if:
iii) it contains incorrect statements;

Nestlé argued that the word “frappe” is a generic term, widely used in trade, as a sign for chilled coffee beverages. The company based its legitimate interest to have standing in proceedings before the Polish Patent Office on the principle of freedom of access to the indications that have descriptive meaning. In addition, Nestlé informed the PPO that it had sent a warning letter to Maspex because the Polish company had introduced to the market a product with similar name. In Nestlé’s opinion the exclusive right granted to Maspex to mark its products with the word “frappe” was a “unlawful constitutional restriction”. After the hearings and careful analysis of the evidence provided by both parties, the PPO found that the word FRAPPE (even being foreign word) was a term used widely to describe the properties of a beverage (cold, frozen, with ice cubes), especially of coffee, or to determine the type of coffee and it could not serve as sign capable of distinguishing goods of one entrepreneur from goods of another entrepreneur in normal market conditions. The PPO also shared Nestlé’s position based on the article 8(3) of the TMA that the wide range of names of goods covered in the registration of the contested trade mark are not frappe. Maspex filed a complaint.

The Voivodeship Administrative Cout in Warsaw in its judgment of 12 October 2008 case file VI SA/Wa 1486/08 fully agreed with the PPO’s decision and dismissed the complaint.

Trade mark law, case II GSK 503/08

May 6th, 2009, Tomasz Rychlicki

The Polish company Gemi from Karczew filed before the Polish Patent Office a request for invalidation of the right of protection for the trade mark PLANTAGINIS R-105263. The Supreme Administrative Court in its judgment of 20 November 2008 case file II GSK 503/08 ruled that it is usually assumed that legitimate interest is the normative category of the substantive law and its source is the substantive law. On this basis the party of an administrative proceedings is entitled to request to specify his or her powers and duties or require an administrative court or body to perform an examination of a legal act or acts in order to protect him or her against violations that was made by this legal act or acts and to lead to a situation that it is consistent with the law. The legitimate interest may also derive from legal norms not only belonging to the administrative law. The confirmation of legitimate interest is always due to the likely connection between the norm of the substantive law and the situation of legal entity to the effect that the act of application of this legal norm (eg, an administrative decision) may affect the legal position of this entity in the field of the substantive law. The SAC also agreed with the opinion of academics that there aren’t any universal definition of a legitimate interest in the field of industrial property law that would include complex situations to justify the submission of the request for invalidation of an exclusive right. The Court noted that the case law indicates the provisions of Article 20 of the Constitution of the Republic of Poland of 2nd April 1997 as published in Dziennik Ustaw (Journal of Laws) No. 78, item 483.

A social market economy, based on the freedom of economic activity, private ownership, and solidarity, dialogue and cooperation between social partners, shall be the basis of the economic system of the Republic of Poland.

The Court also pointed out to Article 6(1) of the Act on Freedom of Economic Activity (in Polish: ustawa o swobodzie dzialalnosci gospodarczej) corresponding to the content of Article 5 of the Act of 19 November 1999 on Law of Economic Activity (in Polish: Prawo dzialalnosci gospodarczej), published in Dziennik Ustaw (Journal of Laws) No. 101, item 1178, as amended.

The assumption, conduct and termination of economic activity shall be free to all on an equal-rights basis, subject to conditions determined in provisions of law.
2. The public administration authority shall neither demand nor make its decision in the matter of the assumption, conduct, or termination of economic activity by an interested party conditional upon satisfaction by this party of additional conditions, including without limitation on the submission of documents or disclosure of information other than that set out in provisions of law.

These are the basis for deriving the legitimate interest for the party seeking for the standing in the proceedings for the lapse or invalidation of a right of protection for a trade mark. When deriving the legitimate interest from the aforementioned legal regulations in case of the invalidation proceedings of a trade mark it is necessary to demonstrate why and how the right of protection for the trade mark PLANTAGINIS R-105263 affect on the legal position of Gemi Company as an entrepreneur. Each entrepreneur has the right to a trademark if the right is not in conflict as to the form, and the period of validity of the previously acquired trade mark right of the same sign. It was necessary to demonstrate that the GEMI’s legitimate interest is relevant to its legal position, because it is current, real, direct and their own (these are the most common elements and features of the legitimate interest), such as verifiability of the legitimate interests and the possibility of obtaining specific benefits. In such cases it concerns the so-called “reflections right” which is creating the legal position of a party not directly, but by a decision of the Polish Patent Office which is “taking back” a right of protection for an earlier trade mark granted to another company.

The SAC dismissed the cassation complaint because it has found that GEMI company did not file its request for invalidation of the right of protection for the trade mark PLANTAGINIS R-105263 in order to obtain the right of protection for the disputed mark for its own. It also did not demonstrate the existence of any obstacles to conduct its business during the sale of goods marked with the disputed trade mark.