Polish IP & IT law – copyright trademark computer internet telecomm

Archive for: Art. 32 Constitution

Procedural law, case VI SA/Wa 1239/11

August 7th, 2012, Tomasz Rychlicki

On 1 March 1994, the company France-Euro Agro applied to the Polish Patent Office for the registration of the word trade mark SOBIESKI Z-130304 for goods in Class 33 such as alcoholic beverages except beer. In its decision of March 1997, the PPO refused to register the applied trade mark because of the similarity with the word-figurative trade mark A SOBIESKI POLISH VODKA R-85456 that was registered with the earlier priority for the same goods in Class 33. This trade mark is currently owned by BELVEDERE S.A. France-Euro Agro withdrew its request for re-examination of the case. However, on December 2005, BELVEDERE requested the PPO to repeal the refusal based on the provisions of Article 154 § 1 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.

A final decision, on the basis of which none of the parties acquired any rights, may be at any time repealed or amended by the public administration authority which issued the decision or by the authority of higher level if it is justified by the public interest or fair interest of the party.

The Company noted that the risk of misleading potential consumers has been eliminated as the owner of both trade marks is now the same entity. BELVEDERE argued also that the PPO does not respect the constitutional rule of law and equal treatment of entities in the application of law, because it has registered three word-figurative trade marks Jan III Sobieski SJ for BRITISH AMERICAN TOBACCO POLSKA TRADING Sp. z o.o., despite the existence of the earlier right of protection for the trade mark A SOBIESKI POLISH VODKA R-85456. The PPO refused to repeal the decision of 1997. The PPO emphasized that decisions taken in such proceedings are discretionary, which means that the PPO examines, whether in the particular situation, the public interest or the fair interests of a party is in favor of the repeal of the final decision. The requirements of public interest or the interests of the parties must be assessed on an individual case and must receive individualized content, resulting from the factual and legal issues. The interest of the party should be “fair” within the objective meaning i.e. it has to be justified by circumstances of the case and accepted under applicable law, also from the standpoint of public interest. According to Polish legal doctrine, the term “public interest” is not defined by the law, and the content of this concept is given by the adjudicating body. The scope of the discretion of the administrative body during the recognition of such issues is limited, for instance by the existence of general principles of administrative proceedings, such as the public interest and fair interest of citizens. The fair interests of citizens is not only deemed as the interest of parties involved in this particular case, but also the interests of other parties to the proceedings before the Patent Office, in this case those who have applied for trade marks after the refusal of March 1997. By withdrawing the request for re-examination of the matter, France-Euro Agro waived its right to appeal, which led to the ultimate end of the proceedings and allowed other entities to apply for trade mark protection. BELVEDERE filed a complaint against this decision.

R-85456

The Voivodeship Administrative Court in Warsaw in its judgment of 7 December 2011 case file VI SA/Wa 1239/11 dismissed it and held that the proceedings to repeal the final decision should not be regarded as a retrial of the case. The Court held that both the institution of proceedings de novo, as well as the repeal of the final decision, are procedures used to verify the faulty decisions, that allows for setting the decision aside, in the situations specified by law, despite its finality. Given the exceptional nature of these procedures, they cannot be abused by a broad interpretation of the conditions of admissibility of their application. The overriding principle is to guarantee the sustainability of the final administrative decision. The Court agreed with the PPO that BELVEDERE could file requests for the invalidation of the rights of protection for trade marks JAN III SOBIESKI JS.

Trade mark law, case VI SA/Wa 562/11

November 4th, 2011, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word trade mark flex fuga Z-297616 applied for by MAPEI POLSKA Sp. z o.o. for goods in Class 1 such as adhesives based on plastics and resins, silicone mortars, for goods in Class 6 such as decorative moldings, profiles, metal profiles, and for goods in Class 19 such as decorative moldings, profiles, profiles not made of metal, masonry mortars, dry plaster, mortars for grouting and welding.

The PPO decided that this trade mark is devoid of sufficient distinctive character and it lacks any additional elements, such as verbal or graphic, which would allow potential purchasers to identify the goods with the source of the origin of goods. The PPO noted that a fuga is a weld/joint between adjacent wall elements and flex means flexible in English.

MAPEI filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in Warsaw in its judgment of 26 August 2009 case file VI SA/WA 1017/09. MAPEI decided to file a cassation complaint. The Supreme Administrative Court in its judgment of 13 January 2011 case file II GSK 19/10 overturned the judgment of the VAC and held that the VAC relied on the erroneous assumption that the buyers (users) of goods bearing the trademark at issue are those who know English or use the Internet every day, which was not supported by any evidence. Besides, the trade mark flex fuga was applied for not only various types of mortars but also for various types of decorative moldings, profiles, sections of metal and non-metallic, and in relation to those goods it is difficult, to talk about “cut or bent” joint or weld.

The case went back to the Voivodeship Administrative Court. The VAC in its judgment of 9 May 2011 case file VI SA/Wa 562/11 held that the fact that the Polish Patent Office has granted the rights of protection for a number of trade marks containing the word “flex” or the word “flex” in combination with other words, should prompt the PPO to a broader examination of the merits of the MAPEI’s trade mark application. Thus, the PPO’s view that even if MAPEI relied on other decisions issued by the Polish Patent Office, it could not affect the assessment of the submitted application and its final examination, is not justified. The VAC noted that the PPO could change its position on the regularity of the grant of rights of protection, in which one element was the word “flex”, but it should justify such change in detail. The case law of the PPO may therefore be subject to change, if the authority demonstrates that there are reasonable grounds. However, any unfounded inconstancy of the opinion of the public body constitutes an infringement of the administrative procedure, because it may result in undermining citizens’ trust in state bodies and adversely affect the legal culture of citizens, and thereby cause a breach of the constitutional rule that all persons shall be equal before the law and all persons shall have the right to equal treatment by public authorities.

Polish patent attorneys, case K 30/01

December 11th, 2006, Tomasz Rychlicki

On 9 July 2001, the Polish Supreme Bar Council (in Polish: Naczelna Rada Adwokacka), requested the Constitutional Tribunal, to declare unconstitutional the provisions of article. 236(1) and (3) 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with subsequent amendments.

Article 236
1. Except as provided for in paragraph (2), in proceedings before the Patent Office in matters relating to the filing and processing of applications and maintenance of the protection of inventions, utility models, industrial designs, trademarks, geographical indications and topographies of integrated circuits, only a patent agent may act as a representative of a party to a proceeding.
2. Subject to paragraph (3), a natural person may also be represented by a joint right holder or parents, brothers, sisters, descendants of the party or persons in the relation-by-adoption with the party.
3. In the matters referred to in paragraph (1), any persons not having their domicile or seat in Poland may only act when represented by a patent agent.

The SBC argued Polish advocates are not allowed to act before the PPO based on provisions of article 236(1) and (3) of the IPL, which in consequence violates the principles of equal treatment of all citizens provided in article 32 of the Polish Constitution.

1. All persons shall be equal before the law. All persons shall have the right to equal treatment by public authorities.
2. No one shall be discriminated against in political, social or economic life for any reason whatsoever.

The Constitutional Tribunal in its judgment of 21 May 2002 case file K 30/01 published OTK-A 2002/3/32, held that the challenged provisions are constitutional. The request was unfounded because one cannot demand for equal treatment of all citizens, from the perspective of the right to perform given professional activity, based on the principle of equality of citizens before the law. According to settled case law of the Constitutional Tribunal, the principle of equality requires equal treatment of persons that have the same legal and factual situation, and – simultaneously – allows differentiation of the legal status of persons belonging to different groups, provided of course that the separation of these groups is made based on criteria consistent with the constitutional values. In the opinion of the Tribunal, the diversity of legal professions, on the one hand, and patent attorneys, on the other hand, does not violate any constitutional principles. The division of professionals and labour is quite obvious for a developed society. Professional groups at issue in this case include the highly specialized professionals, and their operation is strictly regulated by the law, both when it comes to specialist education and professional background, type of activity and responsibility for the improper performance of duties. The Tribunal ascertained that even within the strictly legal profession there is a clear differentiation, which – certainly – did not justify the claim of infringement of the constitutional principle of equality, for example, by forming different status of advocates and notaries, or advocates and solicitors.

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.