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Archive for: Polish Patent Office

Trade mark law, case II GSK 1111/08

January 13th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 24 July 2008, case file VI SA/Wa 237/08, dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeals against the Polish Patent Office (PPO) decision of 19 March 2007, case files Sp. 68/04 and Sp. 69/04, regarding the invalidation of the right of protection for word-figurative trade marks: TIFFANY R-128063 and “Tiffany & Broadway Inc.” R-128064 which were registered in class 25 for shoes. The New York’s company argued inter alia that use of TIFFANY trade mark for goods such as footwear is a parasitic activity that uses another’s trade mark reputation and is bringing undue financial benefit to the holder of national registrations. The Company also stressed the fact that its trade mark is subject to protection under article 8 of the Paris Convention.

The VAC ruled that the application for the protection of the TIFFANY mark for goods in class 25 was contrary to the principles of social coexistence because it caused the risk of weakening the reputation of the trade mark. Given the fact that the shoes are cheap and readily available, there is a risk of dilution of the reputation of TIFFANY trade mark and it may lead to lose its attractiveness among the exclusive clientele of goods bearing this mark.

The SAC in a judgment of 8 July 2009, case file II GSK 1111/08 ruled that the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments, do not explicitly provide for any special protection for unregistered reputed trade marks. However, the doctrine and the Polish case law have already accepted the concept, that such protection could be provided under article 8(1) of the TMA.

A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;

In particular looking at the circumstance of “a trade mark conflicting with the principles of social coexistence”, from the subjective perspective – it was commented that, the “contradiction/variance with the principles of social coexistence” may concerning the conduct/behavior of the applicant. On the basis of such conclusions, the registration of a sign for the goods of another kind, if the registration was intended to use the reputation of another’s trade mark or it was a threat of such reputation, was excluded. A trade mark application that was filed contrary to the principles of social coexistence, was an application made in bad faith. The absolute grounds/obstacles that are provided against the registration of the mark as defined in article 8(1) of the TMA do not directly refer to the relationship between the sign that was applied for and any other competing trade mark, however, in accordance with the accepted interpretation of that provision, in case of the infringement of the rules of social coexistence, the obstacle could be the inappropriate behavior on the applicant (its actions done in bad faith). The assessment of applicant’s actions, who was motivated by the desire to use another’s trade mark reputation, should therefore be also varied according to circumstances of its motivation and, not only related to the trade mark itself.

The application for the right of protection for a trade mark that was made with the intent to use another trade mark’s reputation should be judged as an application that was made with the breach of the rules of social coexistence (application made in bad faith), regardless of whether it concerns a reputed registered trade mark or unregistered reputed trade mark.

The Polish case law, for instance the Supreme Administrative Court in its judgment of 9 May 2008, case file II GSK 506/07, that was previously reported in the post entitled “Trade mark law, case II GSK 506/07“, already established the rule that in a case of famous trade mark and its reputation, besides its recognition, it must be also characterized by the following characteristics:

market share/participation (both quantity and value of sold goods),
range and long-lasting of an advertisment of the product bearing a trade mark,
territorial and temporal range of use,
licences granted for trade mark use, quality of goods bearing a trade mark,
value of a given sign in assessment of an independent financial institution,
size and extent of expenditures spent on promotion of a mark,
the relationship on prices of substitute goods,
if (and to what extent) the mark is used by third party.

The SAC also noted that the Community case law provides several fundamental conditions for the recognition of a trade mark as a reputed one. These are:

knowledge of the trade mark by a significant group of customers,
the contribution of the trade mark in the market,
intensity and geographic scope of the use,
intensity matching of goods with the trade mark,
the size of expenditures on advertising and promotion of the trade mark.

The SAC cited inter alia the judgment of the Court of Justice of the UE of 14 September 1999 in case C-375/97, General Motors and the judgment of the Court of First Instance of 13 December 2004 in case T-8/03, El Corte Ingles and the CFI’s judgment of 25 May 2005 in case T-67/04, Spa Finders.

It is also clear that the reputation of a trade mark must be assessed and established in the country in which the protection is sought. If one would like to qualify a given trade mark as a reputed one in the Republic of Poland, then the argument of the international reputation of a trade mark is not sufficient. The basic circumstance for the recognition of the reputation of a sign in a specific country is to show by a person who is invoking this argument, the market share in terms of both quantity and value of goods sold.

The SAC held that provisions of the First Directive 89/104/EEC of 21 December 1988 do not preclude the possibility of granting the protection to unregistered reputed trade marks under the national law. Just to keep it in order, it is worth adding, that the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, 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 later amendments, provides in article 132(2)(iii)

2) A right of protection for a trademark shall not be granted, if the trademark:
(iii) is identical or similar to a renown trademark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark. The above provision shall apply to well-known trademarks accordingly.

for the protection of registered trademarks to the extent of the wording of article 4(4)(a) of the Directive. The trade mark application that was made in bad faith shall be rejected based on the absolute ground for refusal of protection based on provisions of article 131(2)(i) of the IPL.

2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,

The SAC ruled that the provisions of article 4(4)(a) of the Directive cannot be interpreted as the maximum limitation for the protection of famous marks in the national law and it would be difficult to follow the arguments that the First Directive 89/104 is an example of the so-called “complete harmonization” citing the judgment of the Court of Justice of the European Union of 9 January 2003 in case C-292/00, Davidoff & Cie S. A.

According to the SAC, the court of first instance (VAC) wrongly assumed the bad faith of the applicant and it did not consider the fact that the applicant has conducted its business in Poland since 1990 with the use of the mark, and after about five years of its activity, the company applied for the registration of the mark. These circumstances certainly were not indifferent to assess the intentions and purposes of the applicant so the VAC should address them in the grounds of the appeal.

When deciding on the interpretation of article 8(1) of the TMA, which allows for the protection of not registered reputed trade marks in Poland, it should be also noted, that such protection have a special character because it applies to unregistered marks, and it is an exception to the principle of protecting industrial property rights by the registration process. This requires preserving much care, so that without proper justification, would not depreciate the importance of registering trade mark and it would not reduced the registration to a purely formal procedure that has no importance.

Therefore, the SAC annulled both questioned judgments of the Voivodeship Administrative Court and returned to the VAC for reconsideration in accordance with the conclusions reached and ordered the Polish Patent Office to pay Tiffany & Broadway Inc. Div. of Texpol Corporation 1200 PLN as reimbursement of costs of the cassation compliant.

Industrial design law, case VI SA/Wa 518/09

January 7th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 21 July 2009 case file VI SA/Wa 518/09 ruled that where the scope of creative freedom is greater, the assessment of the originality of the design may justify the thesis that the differences should have easily discernible character. By contrast, in the case of a design with a small range of creative freedom, even small differences will not remain unnoticed by the informed user. The design must be different from designs already known and cannot create the impression that a product of such a form of a design has already been seen. It is necessary to examine the compared designs, including the overall impression which is triggered by the design in terms of the so-called “informed user”. The term “informed user” indicates the person who uses the product/design on a permanent basis, so it is not, nor is the average consumer, or the average expert.

Wzór przemysłowy 11751

This judgment interpreted inter alia provisions of articles 103 and 104 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 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 later amendments.

1. An industrial design shall be considered new if, before the date according to which priority to obtain a right in registration is determined and subject to paragraph (2), no identical design has been made available to the public, i.e. used, exhibited or otherwise disclosed. Designs shall also be deemed to be identical with those made available to the public if their features differ only in immaterial details.

2. The designs shall not be deemed to have been made available to the public within the meaning of paragraph (1), if it could not have become known to the circles specialised in the sector, to which the design belongs.

3. The provision of paragraph (1) shall not prevent a right in registration to be granted, if a design:
(i) has been disclosed to a third party under explicit or implicit conditions of confidentiality,
(ii) has been disclosed during 12-month period preceding the date according to which priority to obtain a right in registration is determined, by the designer, his successor in title or a third person with the right holder’s consent, as well as if the disclosure has occurred as a consequence of an abuse in relation to the designer or his successor in title.

Article 104
1. An industrial design shall be considered to have individual character, if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available before the date according to which priority is determined.

2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Industrial design, case VI SA/Wa 1053/08

November 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 4 November 2008, case file VI SA/Wa 1053/08, said that according to article 117(2) of the IPL, the finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights shall also constitute a ground for invalidation of the right in registration. The Patent Office shall make a decision in litigation procedure.

This judgment concerned the industrial design “Butelka” (in English: bottle), Rp-8064.

Wzór Przemysłowy Rp-8064

Industrial design, case VI SA/Wa 1376/09

November 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 13 November 2009, case file VI SA/Wa 1376/09, ruled that the objections with regard to the lack of novelty and individual character of the industrial design may be raised only when we are dealing with the industrial design as defined in article 102 of the IPL

1. Any new and having individual character appearance of the whole or a part of a product resulting from the features of, in particular, the lines, colours, shape, texture or materials of the product and its ornamentation, shall constitute an industrial design.
2. Any industrial or handicraft item, including, in particular, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs, shall be considered to be a product.
3. The following shall also be considered to be a product:
(i) a product which is composed of multiple components, which can be replaced permitting disassembly and reassembly of the product (complex product),
(ii) a component part, if, once incorporated into the complex product, it remains visible during normal use of the latter, the use being understood as excluding maintenance, servicing or repair work.
(iii) a component part, if it may, by itself, be subject of commercialisation.
4. In case of a design applied to or incorporated in a product which constitutes a component part of a complex product within the meaning of paragraph (3)(i), assessment of novelty and individual character shall only be made in consideration of its visible features.

This case concerned the industrial design “Przeciwpożarowa klapa odcinająca” (in English: fire severing flapper), Rp-12053.

Wzór Przemysłowy 12053

Trade mark law, case Sp. 211/08

October 25th, 2009, Tomasz Rychlicki

On 7 September 2007, the Polish Patent Office granted the right of protection for word-figurative trade mark “PERŁY I ŁOTRY” R-194932 applied for by HARPEL II Wojciech Harmansa for goods in Class 16 and 35. The PPO received a request for the invalidation of the right of protection that was filed by Sinonis Grzegorz Majewski who owns “PERŁY I ŁOTRY SHANGHAJU” R-164275 trade mark registered for goods in Class 09 and 41. Majewski applied for the registration on 2 February 2001. Majewski and Harmansa were members of a music band called PERŁY I ŁOTRY SHANGHAJU, but after some misunderstandings in the band, their paths diverged.

The Adjudicative Board of the Polish Patent Office in its decision of 7 April 2009, case file Sp. 211/08 invalidated the right of protection for “PERŁY I ŁOTRY” R-194932 trade mark in part in Class 35, recognizing the similarity of services.

Patent law, case VI SA/Wa 2566/08

October 13th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 10 June 2009 case file VI SA/Wa 2566/08 held that it is up to the Polish Patent Office (PPO) to reconsider the matter in its entirety and refer to the statements and allegations contained in the request for the reconsideration of the case, taking into account the above guidance and administrative procedures by which the PPO is bound.

Looks like no big deal, right? But if you could read the whole judgment, which unfortunately is not available in English, you would understand that the Polish Patent Office will have to issue an opinion, and will have to justify and explain it appropriately, on the subject what is an invention and what is a computer program and why the PPO does not grant patents to so-called “digital” solutions.

In this context, I look forward to the EPO decision in G 3/08 case and to the SCOTUS’ judgment In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008).

Trade mark law, case VI SA/Wa 121/09

October 13th, 2009, Tomasz Rychlicki

On 9 October 1996, the Polish Patent Office registered the trade mark XAVIER LAURENT R-92393 for goods in class 3 such as personal deodorants. The trade mark is currenty owned by the Polish company HOUSE Spółka z o.o. from Zielona Góra. The International Trade Corporation Limited, the owner of XL XAVIER LAURENT IR-763083 trade mark filed a request for invalidation of the right of protection for XAVIER LAURENT R-92393 trade mark.

The ITC claimed it has been active in the cosmetics industry fo the long time and the most popular goods are these marked with the Xavier Laurent brand. The company had a national distributor of its products in Poland which on March 1994 applied to the Polish Patent Office for the trade mark registration of XAVIER LAURENT sign and later on it has assigned the right of protection for XAVIER LAURENT R-92393 to HOUSE. The ITC based its request on article 8(1) and (2) 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 subsequent amendments.

A trade mark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence.
2) it infringes the personal or economic rights of third parties;

The request was also mentioning article 6septies of the Paris Convention for the Protection of Industrial Property. The Polish Patent Office dismissed ICT’s request and the company filed a complaint to the Voivodeship Administrative Court in Warsaw. On 5 May 2009, the VAC in a judgment case file VI SA/Wa 121/09, ruled that article 8(i) of the TMA must be interpreted broadly and concerns not only the form of trade mark, but also other subjective elements. The basis for invalidation may be, therefore, not only the characteristics of a trade mark itself, but also the reprehensible conduct of the applicant/owner. For the correctness of such interpretation of provisions of article 8(i) speaks the provisions of article 31 of the TMA that expressly provides for the invalidation of the registration rights acquired as a result of bad faith behaviour.

The VAC also held that article 161 of the IPL specifies the entity protected by this provision as “a person entitled to the exclusive use of the mark in a foreign country.” The protection provided for in article 161 may be used by any entity (entrepreneur) from abroad, which will demonstrate that at least in one Member state a specific trade mark is its “property”, especially it has the right of exclusive use that came from the relevant decision of public authorities (patent organ) in that country. The VAC anulled the Polish Patent Office’s decision from 2008 and decided that the decision was not subject to execution. The Judgment is not final yet.

Trade mark law, case Sp. 441/06

September 16th, 2009, Tomasz Rychlicki

Zino Davidoff’s attempted to invalidate the Polish trade mark for COOL WOMAN R-164594 registered in class 3 for goods such as for perfumery products including perfumes, toilet water, lavender water, cologne water and deodorants for personal use and owned by A&S Parfume Factory, a Polish company from Katowice.

The Swiss Company, being the owner of the Polish registered trade mark DAVIDOFF COOL WATER R-71968 and other International and Community trade marks, argued that COOL WATER brand had gained world renown and that the company incurred significant expenses in the brand’s promotion and advertising in Poland in the years 2002-2004. The Company from Fribourg alleged that A&S took the advantage of reputation of Davidoff’s trade marks.

A&S further argued that there was no risk of confusion because the word “cool” has no distinctive character and it appears in many trade marks registered in class 3 for cosmetics. There are 26 marks including the word “cool” that were registered under the Madrid Agreement procedure and 38 marks registered at the national level. The company from Katowice claimed that both elements had a clear meaning for buyers and that both of these English words were well-known to Polish consumers. A&S also argued that it is the Davidoff brand which has reputation – not its Cool Water trade marks.

The PPO in its decision case file Sp. 441/06 rejected the motion brought by Zino Davidoff. According to Polish Patent Office the word “cool” does not possess “the dominant meaning”, because it is included in different previously registered signs. The disputed marks, when assessed in their entirety, are not sufficiently similar to lead to a risk of consumer confusion regarding the origin of the goods. Therefore, the argument based on (the use of) the reputation of Davidoff’s trade marks was also regarded as unfounded.

The decision is not final. Both parties may appeal to the Voivodeship Administrative Court in Warsaw.

Trade mark and Press law, VI SA/Wa 2135/08

September 9th, 2009, Tomasz Rychlicki

On March 2003, the Polish Patent Office granted the right of protection for the word-figurative trade mark 1000 Jolek R-142003 for Oraczewski Roman Oficyna Wydawnicza PRESS-MEDIA from Mielec for goods in Class 16 such as magazines, brochures, crosswords, periodicals.

On October 2003, Agencja Wydawnicza TECHNOPOL Spółka z o. o. from Częstochowa filed a notice of opposition to a final decision of the Patent Office on the grant of the right of protection for the trade mark 1000 Jolek R-142003. Technopol based its opposition on articles 9(1)(i) and 8(1) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

(1) Registration of a trade mark for goods of the same kind shall not be permissible where:
i) it resembles a mark registered on behalf of another enterprise to such an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity

Article 8(1)
A trade mark shall not be registrable if:
i) it is contrary to law or to the principles of social coexistence.

Technopol argued that 1000 Jolek was similar to a series of crosswords periodicals which include magazines marked by a noticeable number in conjunction with the word “panoramic” (in Polish: panoramiczny), i.e. trade marks such as 100 PANORAMICZNYCH R-109471, 200 PANORAMICZNYCH R-105389, or 1000 PANORAM R-126399. According to Technopol, the disputed trade mark duplicated the distinctive element of Technopol’s marks – the form of a numeric element. In Technopol’s view, if the word “Jolki” is omitted it only remains a white figure on a red background. In this situation, the average recipient will identify this sign with a series of Technopol’s publications which have been known for many years. Technopole emphasized that it was the leader in the market for crossword magazines publishing that started in 1994 by introducing the first issue of crossword magazine 100 PANORAMICZNYCH (100 Panoramic). Then Oraczewski began to compete with Technopole by puting on the market crossword magazines entitled in an identical manner, where the leading element a multiple number of 100 was exposed, and the numbers were connected with the word “panoramic” or “crosswords”. According to Technopol, the success of its titles lay precisely in the simplicity of communicating with its customers; Oraczewski took advantage of Technopol’s success in creating of such excellent titles. Technopol also argued that its signs make the so-called “family”, a series of trade marks used to mark Poland’s most popular series of games magazines, which can be more easily identfied through the common element – the number “100″ or its multiples, which is also perceived by the public as information about the goods originating from the same company.

PRESS-MEDIA argued that the disputed trade mark is descriptive in its phonetic aspect, since the number “1000″ combined with the word “Jolek (which defines the type of crossword) causes the trade mark to lack concrete distinctive character. Crucial for the distinctive character of the disputed trade mark is its graphics consisting of the maroon background, the composition of the number 1000 and “Jolek” which are written in fanciful font. PRESS-MEDIA also argued that digits (numbers) only, as well as numbers with words such as “crosswords”, “panoramic”, “panorama”, “sudoku” are purely informational signs with regard to journals with crosswords and other logical exercises. These signs inform of the quantity and/or types of logical exercises/crosswords available in a magazine/publication. PRESS-MEDIA also mentioned that OHIM has repeatedly refused to grant to Technopol trade mark registrations for numbers as trade marks for goods in class 16. See CTM applications such as 150 no. 00466549, 250 no. 004665592, 350 no. 004665601, 222 no. 004665618, 333 no. 004665683, 555 no. 004665709 and Community Trade Marks such as 100 SUDOKU no. 004635711 and 200 SUDOKU no. 004635736. In its decision of April 2009, the PPO rejected Technopol’s oppostion. The company filed a complaint.

The Voivodeship Administrative Court in its judgment of 23 February 2009 case file VI SA/Wa 2135/08 ruled that the protection of a press title which is also a trade mark for a crossword magazine does not exclude the possibility of obtaining the right of protection by another entrepreneur for the press title containing the same elements (numbers), if these signs can be easily distinguished in the trade. The provisions included in article 132(4) 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 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, permit a convergence of these elements, which on the press-market are in a common use, which also excludes the possibility of monopolisation of the use of such phrases.

3. The protection of a trade mark which contains the signs referred to in Article 131(2)(ii)-(iv) and the symbols referred to in Article 131(2)(v), or signs which relate to the origin of the goods, shall not prevent a trade mark containing the same elements from being granted a right of protection on behalf of another undertaking for identical or similar goods, provided that the both trade marks remain easily distinguishable in the course of trade.

4. Paragraph (3) shall apply accordingly to press-titles as trade marks that contain words or combinations of words customary used in the press-market.

What is more interesting the Polish court acknowledged that this rule is also reflected in the foreign case-law concerning conflicts of trade marks and press titles and pointed out to two judgments of the German Bundesgerichtshof of 1 March 2001, case act signatures I ZR 211/98 and I ZR 205/98, that concerned TAGESSCHAU and TEGESBILD trade marks and TAGESSCHAU and TAGESREPORT trade marks, (AfP of 2001 r., no 5, pp. 385, 389). The judgment is not final and a cassation complaint has been filed.

Trade mark law, case VI SA/Wa 2376/08

August 28th, 2009, Tomasz Rychlicki

On 21 February 2004, Wolny Związek Zawodowy Kierowców Rzeczpospolitej Polskiej (Free Trade Union of Drivers of the Republic of Poland) from Warszawa applied to register the word-figurative trade mark WOLNY ZWIĄZEK ZAWODOWY KIEROWCÓW in classes 4, 12, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.

In a letter dated 30 August 2006, the Polish Patent Office informed the applicant that, under article 131(2)(ii) and article 145 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 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 later amendments, it can not be granted the right of protection for the applied sign.

Article 131
2. A right of protection shall not be granted for a sign, if:
(ii) it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organisations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organisations performing activities in vital public interests, where these organisations’ activities extend to the entire territory of the State or to a substantial part thereof, unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organisation, to use the sign in the course of trade,
(…)
Article 145
1. Subject to paragraph (2), where the Patent Office finds that the statutory requirements for the grant of a right of protection for a trademark have not been satisfied, it shall make a decision on refusal to grant the right.

2. Before the decision referred to in paragraph (1) is made, the Patent Office shall fix a time limit, within which the applicant is invited to react on the collected evidences and documents which imply the existence of grounds that may cause the right of protection to be denied.

The PPO pointed out that the mark contains a white eagle, which is protected based on the provisions of the Act on Coat of Arms, Colours and Anthem of the Republic of Poland (in Polish: ustawa o godle, barwach i hymnie Rzeczypospolitej Polskiej) of 31 January 1980, published in Journal of Laws (Dziennik Ustaw) No. 7, item 18, with later amendments.

In response to the objections raised by the Polish Patent Office, the applicant in a letter dated 11 September 2006, disagreed with the PPO’s assessment and claimed that the drawing of a bird included in the trade mark recalls an eagle, but it is a completely different bird to that depicted in the emblem of the Republic of Poland. WZZK pointed out the different colour of a bird, the colouring of his crown and claws, and the differences in the background. WZZK also noted that the mark includes the inscription “Wolny Związek Zawodowy Kierowców” (Free Trade Union of Drivers).

The Polish Patent Office in its decision of 22 June 2007 refused to grant a right of protection for the applied trademark. In a letter dated 23 July 2007 WZZK requested a retrial, calling for the reversal of the contested decision. In its decision of 19 September 2008, case file DT265/07, the Polish Patent Office upheld the contested decision of 22 June 2007. The PPO pointed out, that the provisions of article 131(2)(ii) of the IPL meet a double function. It is one of the provisions to guarantee the state, its bodies and institutions a monopoly on the use of state symbols. These symbols have a specific role in business transactions and are intended solely for the identification of specific nationals’ bodies or institutions, or documents derived or issued by them. Moreover, this provision assures the average consumer that the national symbols are used by the authorized institutions of the Polish state. The PPO also cited article 16(2) of the Act on Coat of Arms, Colours and Anthem of the Republic of Poland, according to which, it is permitted to place on goods intended for trading the emblem of the Republic of Poland or the colours in a stylized or artistically prepared form, but the PPO also said that these provision only authorize for the placement and they do not allow to grant the right of protection. WZZK filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw.

The Voivodeship Administrative Court in its a judgment of 6 March 2009 case file VI SA/Wa 2376/08 dismissed the complaint and ruled that pursuant to article 28 of the Constitution of the Republic of Poland, the emblem, colours and the national anthem of the Republic of Polish are protected by law and details regarding these symbols are provided in the Act on Coat of Arms, Colours and Anthem of the Republic of Poland. Article 1(1)(2) and (3) of this Act provides that the white eagle, white-red color and “Mazurek Dąbrowskiego” are the symbols of the Republic of Poland. The right and the duty of every citizen of the Republic of Poland and all state organs, institutions and organizations is to respect these symbols. These symbols remain under special protection provided in different regulations. The provision included in article 131(2)(ii) of the IPL excludes the possibility to grant the right of protection for the sign, not only when it contains an exact reproduction of the image of an eagle as provided in the Annex 1 to the Act on Coat of Arms, Colours and Anthem of the Republic of Poland but also when a sign contains a drawing of an eagle as described in article 2(1) of the Act.

The coat of arms of the Republic of Poland is the image of a white eagle with a gold crown on his head turned right, with unfolded wings and gold beak and claws, on a red field.

This provision allows for the registration of a trade mark which contains, among others the emblem, only in one case – the applicant has to prove to have the right to use such trade mark in trade. It was undisputed for the Court that the applicant had no such right. And for all readers interested in these issues I would like to recommend reading Grzegorz Pacek’s article entitled Marks as imitations of State emblems ‘from a heraldic point of view’ that was recently published in the Journal of Intellectual Property Law & Practice, Volume 4, Number 9, September 2009.

The rest of the story is described in the post entitled “Trade mark law, case II GSK 555/09“.

Trade mark law, case VI SA/Wa 1655/08

August 27th, 2009, Tomasz Rychlicki

On 7 February 2003, Browar Belgia Sp. z o.o. from Kielce applied to register the word trade mark GINGERS Z-260753 for goods such as beer, beer-based drinks, juices, syrups, essences for making beverages, soft drinks, preparations for the production and manufacture of beverages, extracts and extracts of hop in class 32.

In a letter dated 14 May 2004, the Polish Patent Office informed the applicant that there was an obstacle to granting the right of protection for GINGERS mark, since it is an informative sign which has insufficient distinctive character to enable it to distinguish the products of one undertaking from other companies, under normal market conditions.

In its letter of 14 June 2004 Browar Belgia argued that, contrary to the assertion of the PPO, the name “gingers” associated with the list of goods covered by the application is not a generic term and does not perform only an informative function. Browar Belgia noted that the word “gingers” has multiple meanings in English language and can be understood as, inter alia, the colour red/red-headed and also as verve, the zest or liveness, and the word “ginger” is just one of many translations into Polish. The name GINGERS should also be regarded as fanciful because it has the “s” letter placed at the end of a word, while the noun “GINGER” is singular. Moreover, it is unreasonable to say that all consumers of beer and soft drinks in Poland speak fluent English and will associate English word with its counterpart in the Polish language, ie ginger.

In a letter of 17 October 2005, the PPO expressed the view based on articles 129(1)(ii), article 129(2)(i) and (ii) and article 131(1)(iii) 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 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 later amendments.

1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

Article 129(2)(i) and (ii)
2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(i) signs which are not capable of distinguishing, in trade, the goods for which they have been applied,
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods,

Article 131(1)(iii)
1. Rights of protection shall not be granted for signs:
(iii) which, as for their nature, may mislead the public, in particular as to the nature, properties of the goods or, with regard to paragraph (3), as to the geographic origin thereof,

The PPO noted that the mark applied for cannot be granted a right of protection due to the fact that the sign is informative for the majority of goods in class 32 and as for extracts and extracts of hops; it is a sign that it may mislead the public as to the nature or characteristics of these goods. In its decision of 28 February 2007, the Polish Patent Office refused to grant the right of protection for the word trade mark GINGERS. The PPO noted that granting the right of protection for GINGERS word trade mark in favor of one entrepreneur would limit freedom of business activity of other market participants in the process of producing and marketing of these goods and thus hamper the business activities of other entities.

In a letter dated 11 May 2007, Browar Belgia requested a retrial, calling for the reversal of the contested decision. According to Browar Belgia, granting the right of protection for GINGERS trade mark would not limit anyone from the possibility of providing, for example, the composition of beer on the label in place designated for that purpose, but this does not mean that the composition of beer, to be specific the content of the component, is a passport to putting GINGERS into other trade marks. It was an unacceptable situation in which another party would benefit from the reputation of the trade Gingers, that was promoted by a very expensive advertising campaign. In the meantime, Browar Belgia transferred the right to trade mark application GINGERS Z-260753 to Kompania Piwowarska S.A. from Poznań. In a decision of 30 May 2008, the PPO upheld in entirety its previous decision of 2007. Browar Belgia filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw and Kompania Piwowarska joined the case.

The VAC in its judgment of 17 February 2009, case file VI SA/Wa 1655/08 dismissed the complaint and ruled that the principle of free access for all traders to signs that serve to communicate information about the nature of goods, their characteristics or properties does not allow for their monopolization by a single market participant.

Industrial design, case VI SA/Wa 664/09

August 20th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 19 August 2009, case file VI SA/Wa 664/09, ruled that according to articles 106, 106¹ and 107 of the IPL

Article 106
1. Rights in registration shall not be granted for industrial designs whose exploitation would be contrary to public order or morality; exploitation of an industrial design shall not be considered to be contrary to public order merely because it is prohibited by law.

2. Subject to the exceptions provided for in this Law, rights in registration shall neither be granted for industrial designs that include the signs referred to in Article 131(2)(ii)-(v).

Article 106¹
1. Protection conferred by the registration of a design shall not exist for a product which constitutes a component part of a complex product used for the purpose of the repair of that complex product so as to restore its original appearance.

2. Third parties shall be permitted to use the product referred to in paragraph 1 in a form of making, offering, putting on the market, importing, exporting or using of the product in which the design is incorporated or to which it is applied, or stocking such product for those purposes.

Article 107
1. The right in registration of an industrial design shall not subsist in features of a product:
(i) which are solely dictated by its technical function,
(ii) which must necessarily be reproduced in their exact form and dimensions in order to permit the product to be mechanically connected to, or to interact with, another product.

2. The provision of paragraph (1) shall be without prejudice to the registration of an industrial design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

it is apparent that the protection does not cover the features of a product, which are determined solely by their technical functions and those which must be reproduced in their exact form and measurements in order to allow mechanical connection or interaction with other product (spare parts).

This case concerned the industrial design “Kołek mocujący” (in English: fixing peg), Rp-10736.

Wzór Przemysłowy 10736

See also my post entitled “Polish case law on industrial designs“.

Trade mark law, case VI SA/Wa 1917/08

August 18th, 2009, Tomasz Rychlicki

On 23 September 2005, the Polish Patent Office granted the right of protection for the word trade mark COROTAPE R-168086 for goods such as tape, foil and anti-corrosion membranes in class 2 and goods in class 16. The right was granted to the Polish company CB Spółka z o.o. from Opole. Coroplast Fritz Müller GmbH & Co.K.G. from Wuppertal, Germany, filed a notice of opposition based on article 246 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 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 later amendments.

1. Within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right in registration.

2. The opposition referred to in paragraph (1) may be filed on the same grounds, on which a patent, a right of protection or a right in registration may be invalidated.

Coroplast Fritz Müller argued that COROTAPE was similar to its COROPLAST mark R-91907, registered for goods in classes 2, 9, 16 and 17 and that they were confusingly similar because they shared the same prefix “coro”. There was therefore a risk that the average recipient of the goods bearing compared trade marks, may think that the conflicting signs, as having a common, “coro” prefix, derived from the same manufacturer or from companies affiliated (legally or organizationally). In addition, Coroplast Fritz Müller argued that the trade mark application was made in bad faith, because its products were present in Poland for many years and had established a reputation of which CB Spółka z o.o. must have been aware.

CB Spółka z o.o. argued that it continued the development of the COROTOP brand and that the disputed trade mark was not similar to the trade mark and company name of Coroplast Fritz Müller in their phonetic aspect because, in spite of the identical prefix, they had a completely different ending, indicating the nature of the product. In addition, the Polish Patent Office had registered a number trade mark starting with the prefix “coro” or “koro” for goods in classes 2 and 17. What’s more, there was no risk of misleading, because the goods were placed on the market in conjunction with the information for the customer and for a limited group of specialized recipients.

Coroplast Fritz Müller further stated that the Polish company acted in bad faith because it had used COROPLAST on its website which was removed as a result of the cease and desist letter, and since the seat of CB Spółka z o.o. was located where two Polish subsidiaries of German companies also operated.

While assessing the similarity of the two characters, the PPO found that they consisted of three syllables, with the same fanciful prefix, which is a distinctive element and acts as a tip about the commodity. As a result, the PPO found that the disputed trade mark was similar to the earlier registered sign in its visual and aural aspects but was not similar in the conceptual context. The PPO indicated that the visual similarity was based on the same syllables, the same letters in the same or similar quantities. The PPO also stressed that the disputed mark was of three syllables, using the same “coro” prefix, which was fanciful, and was definitely a distinctive element. The “tape” ending was far less important, fulfilling an information role about the function of the goods. The use of the “coro ” prefix maked the signs phonetically similar.

Referring to the case law, the PPO emphasized that assessment of a trade mark is made as a whole and the risk of misleading the consumer must be assessed globally, taking into the account all relevant factors. In the PPO’s assessment, despite the assumption that the average consumer is a person duly informed, careful and cautious, there is a risk of confusion. The buyers, while recognizing the difference between COROPLAST and COROTAPE, would wrongly assume – because of the prefix which is identical – that they purchased the goods originating from one manufacturer or from the entities that are economically and organisationally linked.

The PPO did not agree with an argument that it had registered a number of trade marks for goods in in class 2 and 17 with “coro” and “Koro” prefixes. It pointed out that none of these trade marks was intended to designate the goods that were concerned in this dispute, adhesive tapes for industrial use.

In addition the PPO found that the applicant made a bad faith application for COROTAPE. It was evidenced by the use of “coroplast” in the offer and on its website. The PPO found that it was not accidental that the use of the prefix “coro” in the COROTAPE and COROTOP trade marks, which are leading brands of CB Spółka z o.o. The PPO also stressed the significant fact that there were two factories belonging to Coroplast Fritz Müller GmbH, located in small towns around Opole (where CB Spółka z o.o. has its business seat), which have operated since 1994 and 1998. According to the PPO, it was not possible that CB Spółka z o.o. was not aware of the existence of these factories and unwittingly created a trade mark with a “coro” prefix.

The Polish Patent Office invalidated the right of protection for COROTAPE R-168086 trade mark. CB Spółka z o.o. filed a complaint to the Voivodeship Administrative Court in Warsaw. Although the VAC in a judgment of 19 February 2009, case file VI SA/Wa 1917/08 ruled that an application for the rights for protection of a trade mark in bad faith occurs when, despite the knowledge or ignorance, which is a corollary of a lack of diligence, regarding the existence of someone else’s rights or interest worth of protection, which may be threatened by such application, and with the intent to harm someone’s else interests. The intention, assessed from the point of view of fairness and honesty, is of great importance for the assessment of applicant’s bad faith.

Such is the case when the trade mark application is done in order to eliminate a competitor with the intent to capture his clientele. Acting in bad faith is one who knows or with due diligence should know about the use of a trade mark by another highly successful entrepreneur and – anticipating his application for the right of protection for a trade mark – he applies for the registration of such trade mark. Acting in bad faith is a person who applies for a trade mark rights for a sign belonging to a foreign entrepreneur to prevent him in obtaining protection in the Republic of Poland or in order to obtain profits from the sale of such acquired rights.

But the Court also held that the Polish Patent Office did not properly justify its decision on the bad faith application. The VAC found that the issueance of the contested decision was made in breach of the procedural law, and it annulled it, ruling that the decision was not a subject to execution. The judgment is final.

Trade mark law, allusive signs

July 1st, 2009, Tomasz Rychlicki

An interesting example is BALSAM Z SADŁA ŚWISTAKA R-183603 trade mark. It should be translated as Balm of Marmot’s Fat. But still, in my ranking of allusive trade marks, the first place is given to the application filed by the Polish company Przedsiębiorstwo Produkcyjno-Handlowe “Paola” Spółka z o.o. z Bielan Wrocławskich for the sign “A to ci puszka” Z-233576, which in strict translation shall be undestood as “What a can” but in fact in a loosely translation can be understood as “What a cunt”. I just wonder what the examiner of the Polish Patent Office has thought about it.

Categories: absolute grounds for refusal | Polish Act on Industrial Property Law | Polish Patent Office | trade mark examination | trademark law.

Trade mark law, case VI SA/Wa 1483/08

June 23rd, 2009, Tomasz Rychlicki

On September 2006, the Polish Patent Office issued a decision invalidating the right of protection of the BOSS LIGHTS R-136520 trade mark, owned by Reemtsma Cigarettenfabriken GmbH from Hamburg, Germany. The PPO ruled that the registration of the disputed mark occurred in violation of article 8(2) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Journal of Laws (Dziennik Ustaw) of 1985 No 5, itme 15, with later amendments.

A trade mark shall not be registrable if:
ii) it infringes the personal or economic rights of third parties

It was indisputable for the PPO that BOSS LIGHTS R-136520 consists of the “BOSS” sign, which was written in black, this being the only element of BOSS R-66417 trade mark and the main element of other signs: HUGO BOSS R-66418, BOSS HUGO BOSS IR-584899 and BOSS IR-606620 which are owned by HUGO BOSS Trade Mark Management GmbH & Co. KG from Metzingen, Germany.

Reemtsma filed a complaint before the Voivodeship Administrative Court (VAC) in Warsaw. The court rejected the complaint in its judgment of 4 September 2007, case file VI SA/WA 2195/06. Reemtsma filed a cassation complaint to the Supreme Administrative Court. The SAC agreed with Reemtsma’s arguments that the PPO did not explain the facts accurately and did not thoroughly conside the entire evidence. The case was sent back to the VAC. See “Trade mark law, case II GSK 506/07“

The Voivodeship Administrative Court in its judgment of 6 February 2009, case file VI SA/Wa 1483/08 annulled the contested decision of the PPO and decided that the decision was not subject to execution. The VAC also stressed the fact that it is necessary to distinguish the renown of an entrepreneur – its good reputation and positive image – from the trade mark’s reputation (renown). In the case of the reputation (renown) of a trade mark – the subject of positive perceptions is the mark itself and the goods identified by such mark as originating from a particular business, and the reputation of the entrepreneur is generally positive perceptions and assessments about the business.

The case went back to the PPO. However, the Polish Patent Office in its decision of 15 October 2010 case Sp. 255/09 invalidated the right of protection for the BOSS LIGHTS R-136520 trade mark. This time, the PPO found that the trade mark in question is confusingly similar to BOSS HUGO BOSS IR-584899 and BOSS IR-606620 trade marks, and these findings were justified by the literal interpretation of the provisions of Article 9(1)(iii) of the TMA.

Trade mark law, case II GSK 764/08

May 22nd, 2009, Tomasz Rychlicki

In March 2007 the Polish Patent Office issued a decision invalidating the right of protection for the trade mark OFF THE LIP R-153658 owned by Polish company PREMIERE Spólka z o.o. from Chorzów, registered for goods in classes 18 and 25. The request for invalidation was brought before the PPO by German entrepreneur Kurt Wendler-Rothenberger, who owned two German trade mark registrations for OFF THE LIP RN-1120143 and RN-2015151. The request was based on article 8(i) 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:

A trade mark shall not be registrable if:
(i) it is contrary to law or to the principles of social coexistence;
Mr. Wendler-Rothenberger claimed that he had business relationships with the Polish company in the period from 1992 to 1996. In PPO’s opinion it had been proved that Polish company was fully aware of the fact that OFF THE LIP sign belongs to another entity, and such action of submitting someone’s else trade mark for registration in the Republic of Poland was contrary to the principles of good conduct in trade.

The Polish company brought a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 24 January 2008, act signature VI SA/Wa 1394/07 dismissed it, and ruled that all procedural matters have been sufficiently and thoroughly investigated and determined by the Polish Patent Office. The Court acknowledged that, from the beginning, the Polish company knew that OFF THE LIP sign was somebody else’s property — that of its contractor and business partner. In the court’s assessment it was a classic example of bad faith, since PREMIERE was aware that it does not have the right to this sign and even if it could not be aware – it should have known about that.

PREMIERE Sp. z o.o. filed a cassation complaint. The Supreme Administrative Court in its judgment of 12 March 2009 case file II GSK 764/08 rejected the complaint and ruled that the provision of article 8(1) of the TMA provides an independent and sufficient condition for the inadmissibility of the registration of a sign, and it’s in any way unrelated to the exclusive protection of marks registered and benefiting from protection in a given country. The SAC clearly held that filing a trade mark application of someone else’s sign when a special relationship of trust existed between parties of a contract, is a classic example of behaviour contrary to the principles of social coexistence.

Trade mark law, case Sp. 424/06

May 10th, 2009, Tomasz Rychlicki

On 28 February 2005, the PPO issued a positive decision and registered the word-figurative trade mark METAL-CHEM R-162449 in Class 6 for goods such as steel, in Class 7 for goods such as machinery and equipment for special treatment, technological lines for waste treatment as well as the teams line and accessories, machinery and equipment for the production of cobblestones, bricks and masonry, welders for pipes, in class 11 for electric heaters and in Class 40 for production of special machines, mechanical and thermal processing, casting of non-ferrous metal. It was applied for on 24 September 2001 by the Polish company Zaklad Urzadzen Metalowych “METAL-CHEM” Sp. j. A. Pochec, L. Szymanski, M. Aplas from Rudki.

R-162449

Another Polish company, Instytut Inzynierii Materialów Polimerowych i Barwników (the Institute for Engineering of Polymer Materials and Dies), from Torun filed a request to invalidate the right of protection. The request was based on 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 129(1)(i)
Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

Article 131(1)(i)
Rights of protection shall not be granted for signs:
(i) whose use infringes third parties’ personal or economic rights,

Article 132(2)(i) and (iii),
A right of protection for a trade mark shall not be granted, if the trade mark:
(i) is identical to a trade mark registered or applied for registration with an earlier priority date (provided that the latter is subsequently registered) on behalf of another party for identical goods,
(iii) is identical or similar to a renowned trade mark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trade mark. The above provision shall apply to well-known trade marks accordingly.

The company from Toruń presented its trade mark METALCHEM R-51184 registered with an earlier priority on 12 April 1973. This trade mark was applied for on 15 May 1972, for goods in Class 6, 7, 9, 20 such as worm pumps, pumps, vertical and horizontal rotational pumps for aggressive liquids, valves, clamps, agitators, mixers, pressure-type apparatus made of stainless steel and carbon steel, containers for transporting granular substances, containers and tanks of plastics.

The PPO has invalidated METAL-CHEM trade mark in its decision of 29 January 2009 case act signature Sp. 424/06. The Adjudicative Board of the PPO has taken into account only arguments based on article 132(2)(ii) of the IPL. The board acknowledged that METALCHEM trade mark has distinctive character and is successfully used at the market. As regards arguments based on article 132(2)(i) the Board held that both signs are identical, the separate spelling is not a significant argument and the goods are similar and complementary. The reputation has not been proven by the company from Toruń so the motion based on article 132(2)(iii) of the IPL was rejected. The decision is not final.

Industrial design, case VI SA/Wa 109/09

April 19th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 4 April 2009, case file VI SA/Wa 109/09, ruled that is not important, who disclosed the design. The PPO correctly pointed out on the wording of article 103(3)(ii) of the IPL.

1. An industrial design shall be considered new if, before the date according to which priority to obtain a right in registration is determined and subject to paragraph (2), no identical design has been made available to the public, i.e. used, exhibited or otherwise disclosed. Designs shall also be deemed to be identical with those made available to the public if their features differ only in immaterial details.
(…)
3. The provision of paragraph (1) shall not prevent a right in registration to be granted, if a design:
(…)
ii) has been disclosed during 12-month period preceding the date according to which priority to obtain a right in registration is determined, by the designer, his successor in title or a third person with the right holder’s consent, as well as if the disclosure has occurred as a consequence of an abuse in relation to the designer or his successor in title.

Only the disclosure by the creator, his legal successor, or – with the consent of the holder – by a third party, and if the disclosure was made as a result of abuse in relation to the creator or his successor in the 12 months period before the priority date, does not harm the novelty requirement, any other publicly available disclosure of a design is an obstacle for the novelty requirement.

This case concerned the industrial design “Parapet okienny” (in English: windowsill), Rp-10571.

Wzór Przemysłowy 10571

See also “Polish case law on industrial designs“.

Trade mark law, case II GSK 762/08

April 12th, 2009, Tomasz Rychlicki

Bauer Publishing House owns the word-figurative trade mark TWÓJ STYL R-69382 which is registered for goods such as printed matter, newspapers, magazines, books, packaging, clothing, shoes, advertisement services for third-party hotel and catering services. In 2007 the Polish Patent Office issued a decision on the lapse of the right of protection for TWÓJ STYL trade mark in class 25 for goods such as clothing and shoes. The Voivodeship Administrative Court in Warsaw agreed with PPO’s decision and rejected Bauer’s complaint in its judgment of 6 February 2008, act signature VI SA/Wa 1418/07. The Company filed a cassation complaint.

R-69382

The Supreme Administrative Court in its judgment of 12 March 2009 case file II GSK 762/08 has rejected Bauer’s cassation complaint. The SAC ruled that, according to Polish case law and legal doctrine, the “genuine use” of a trade mark should be directed towards the consolidation of the brand in the market and should seek for its awareness between consumers and competitors. The opposite to “genuine use” is usually the occasional action taken in order to avoid a non-use accusations and actions that are taken other than for purposes of actual business activity. As part of the obligation to make genuine use of a mark, Polish doctrine established the concept of “preparatory action”, which allows to preserve of the right of protection for a trade mark and possible refutation of the non-use allegations. Examples of such “preparatory action” are: a contract of the importation of goods bearing the trade mark, intense advertising in the media or a license agreement for trade mark use. These are activities that aim to genuinely use a trade mark and such actions should be temporarily and functionally associated with the future use of a trade mark. According to the PPO’s findings the owner of TWÓJ STYL trade mark sold clothing with this sign, but this activity ended in 1998 with the last sale of these products.

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. Being aware that it was possible that the Polish Patent Office would reject the application because of the earlier trade mark registration of CHOKELLA R-85159, registered with priority on 30 August 1993 for Kelsen The International Bakery A/S, Norre-Snede which during Nestle’s application was under the grace period based on article 132(1)(iii) 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 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 rights of protection to CHOKELLA trade mark 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 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 provisions afforded in the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

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) 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 SAC gave a very detailed ruling. First, the Court noted that on 23 April 2008, the Polish Supreme Administrative Court gave an important ruling in case II GPS 1/08. The SAC held that according to article 169(1)(i) of the Act on Industrial Property Law, 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. The judgment was published in ONSAiWSA of 2008 r. No 5, pos. 77. See also “Trade mark law, case II GPS 1/08“.

The SAC ruled that aforementioned judgment can not be excluded from the determination on 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).

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 transfered by the declaratory act on the life of the party in the family and the society. The Court held that similarites 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.

The Supreme Administrative Court in its judgment of 21 January 2009, act signature II GSK 668/08 annulled the ruling of the Voivodeship Administrative Court in Warsaw.