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Archive for: Polish Patent Office

Trade mark law, case Sp. 158/08

March 26th, 2009, Tomasz Rychlicki

On 17 October 2006, the Polish Patent Office registered the word-figurative trade mark BATCZEW KOMPERDA R-181286 in Class 29 for goods such as bacon, meat extracts, meat jellies, blood pudding, smoked meat, sausages, canned meat, meat, canned meat, canned meat, salted meat, pork, pie with liver, lard, ham, liver, cured and pork and in Class 40 for services such as the slaughter and food smoking. This sign was applied on on 22 March 2004 by the Polish company “FIRMA BATCZEW Stanislaw Komperda” from Morawczyn.

R-181286

The European Commission filed a request to invalidate the registration based on article 131(2)(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 shall not be granted for a sign, if:
(iii) it incorporates the abbreviated names or symbols (armorial bearings, flags, emblems) of other countries, international organisations, as well as official signs, hallmarks indicating control and warranty adopted in other countries, if the prohibition of registration follows from international agreements, unless the applicant is able to produce an authorisation issued by a competent authority, which authorises him to use such signs in the course of trade.

The EC alleged that the sign imitated the European Union flag and that the symbolism of its additional elements did not change the overall impression.

Permission to use the European emblem does not confer on those to whom it is granted any right of exclusive use, nor does it allow them to appropriate the emblem or any similar trademark or logo, either by registration or any other means. Each case will be examined individually to ascertain whether it satisfies the criteria set out above. This will be unlikely in a commercial context if the European emblem is used in conjunction with a company’s own logo, name or trade mark.

The Adjudicative Board of the Polish Patent Office in its decision of 6 March 2009 act signature Sp. 158/08 agreed with the EC’s arguments that FIRMA BATCZEW Stanislaw Komperda’s trade mark imitated the flag of the European Union. In PPO’s view the flag of the European Union can not be used in a trade mark, even if it is stylized, and even if the sign has more elements. The PPO cited judgment of the Court of First Instance of 21 April 2004 in case T-127/02, Concept v. OHIM (ECA).

40. State emblems and emblems of international intergovernmental organisations are protected not only against the registration and use of marks which are identical to them or which incorporate them but also against the inclusion in such marks of any imitation of those emblems from a heraldic point of view”.

The PPO’s decision is not yet final. The Polish comapany may file a complaint to the Voivodeship Administrative Court in Warsaw.

Trade mark law, case II GSK 642/08

March 19th, 2009, Tomasz Rychlicki

On October 25 1995 a Polish entrepreneur Tomasz Bednarski conducting business under the company name Optyk Tomek in Warsaw applied for registration of a word trade mark Optometrysta (“optometrist”) in class 42 for services such as examination of eye refraction, selection of spectacles for individual needs, selection of contact lenses for individual needs, selection of telescopic spectacles for individual needs. On August 4 1998, the trade mark was registered by the Polish Patent Office under number R-104424.

In February 2007, the President of the Executive Board of the Polish Society of Optometry and Optics informed the Polish Patent Office that the word optometrysta is a common profession name, used at least since 1983. In March 2007, the request for invalidation of the trade mark was filed by the President of the Patent Office, based on claims that the registration was granted against Article 7(2) 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.

The only signs that shall be eligible for registration as trade marks are those that have sufficient distinctiveness in ordinary economic activity.

A sign shall not have sufficient distinctiveness if it simply constitutes a 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.

This was in connection with Article 167(2) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, 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.

The General Public Prosecutor of the Republic of Poland or the President of the Patent Office may, in the public interest, request that the right of protection for a trade mark be invalidated or intervene in an invalidation action already pending.

According to the President of the Polish Patent Office, the trade mark Optometrysta is simply the name of a profession. The World Council of Optometry defines optometry as

a healthcare profession that is autonomous, educated, and regulated (licensed/registered), and optometrists are the primary healthcare practitioners of the eye and visual system who provide comprehensive eye and vision care, which includes refraction and dispensing, detection/diagnosis and management of disease in the eye, and the rehabilitation of conditions of the visual system.

In 1999 the profession was entered on to the list of professions performed in Poland, which is kept by the Ministry of Labour and the President of the Central Statistics Office.

During the hearings at the Patent Office, the owner of the mark declared that he performed the services under the mark, and according to his knowledge, the mark had not been earlier registered in the name of any other party. In view of this, he decided to apply for registration of the mark with the aim of obtaining financial benefit.

The Adjudicative Board of the Polish Patent Office, by virtue of its decision of May 30 2007, case file Sp 141/07, invalidated the trade mark right. The Patent Office argued that before the date of filing an application for registration of the sign as a trade mark, it functioned as the name of a profession in the optical industry. At the date of invalidation, the subject mark does not have any distinctive character, and therefore no one should be granted the exclusive protection right for the mark, and at the same time a monopoly thereto.

Bednarski lodged a complaint with the Voivodeship Administrative Court (VAC) in Warsaw (decisions of the Patent Office are subject to complaints with the Administrative Court). He questioned procedural aspects of the Patent Office’s decision, and argued that the Patent Office should base the request for invalidation on article 31 of the TMA.

The request for annulment of a right deriving from registration of a trade mark may be filed within five years of the date of registration. After the expiry of that period, such request may only be filed in respect of an owner who has obtained a registration in bad faith.

According to Bednarski, the term for filing this request terminated in 2004, and the Patent Office had not made reference to bad faith action in order to file the request for invalidation after expiry of this term. The District Administrative Court rejected the trade mark owner’s arguments. The Court, in its decision of December 13 2007, case file VI SA/Wa 1708/07, held that the five-year statutory period for filing the request for invalidation had not expired before the entry into force of the new Law on Industrial Property, which provided different regulations and opened new opportunities to file the request for invalidation. These regulations are set forth under Chapter 6 of the Law on Industrial Property entitled “Invalidation and Lapse of the Right of Protection for a Trade Mark”. Apart from exceptional circumstances specified therein, the legislature has waived the deadline for requesting invalidation proceedings. As of August 22 2001, no time limit will restrict the possibility of requesting invalidation of the right of protection. Thus, after August 22 2002, the President of the Patent Office, acting in the public interest, may at any time request the invalidation of the right of protection that was granted against the law.

Bednarski filed a cassation complaint with the Supreme Administrative Court. However his motion was dismissed by virtue of a decision of the Supreme Administrative Court of January 20 2009 case file II GSK 642/08. The decision is final.

Trade mark law, case Sp. 564/07

March 4th, 2009, Tomasz Rychlicki

On 21 July 2006 the PPO issued a positive decision and registered the word trade mark PLUSPIRYNA R-175822 in class 5 for pharmaceuticals products. It was applied for on 4 November 2005, by the Polish company Zakłady Farmaceutyczne Polpharma S.A. from Starogard Gdański. The German company Bayer Aktiengesellschaft from Leverkusen filed a request to invalidate the right of protection. The request was based on article 131(2)(i) and article 132(2)(ii) and (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.

Article 131(2)(i)
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,

Article 132(2)(ii) and (iii)
2. A right of protection for a trade mark shall not be granted, if the trade mark is:
(ii) a trade mark which, before the date according to which priority to obtain a right of protection is determined, has been well-known and used as a trade mark in respect of the goods of another party,
(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.

Bayer presented its earlier rights of protection for the trade mark ASPIRIN R-41042, which was applied for in the Republic of Poland on 20 June 1958, in class 5 for pharmaceutical preparations. Bayer alleged that Polpharma’s mark was confusingly similar to ASPIRIN and that PLUSPIRYNA is build on the reputation of Bayer’s trade mark. The disputed trade mark includes “pirin” component which in its overall assessment makes it similar to the ASPIRIN trade mark and it also weakens its reputation. Bayer has also registered other trade marks such as ASPIRIN-C R-105171, ASPIRIN R-105170 – applied for on 18 January 1994, these signs were registered on 8 September 1998 and ASPIRIN R-94326 – registered on 26 February 1997, in class 5 for goods such as medicines, pharmaceutical preparations, chemical proudcts for health care.

Polpharma argued that it has been registered a lot of trade marks including the “piryn” element. Although ASPIRIN trade mark has been applied to register in Poland in 1958, but for many years products bearing this sign were not available on the market in general, only in Pewex and Baltona shops – these two types of shops operated in the communist Poland selling otherwise unobtainable Western goods in exchange for Western currencies. Polpharma provided a whole series of trade marks that include “piryna” element – a well-known word mark POLPIRYNA R-48888 protected since 1969, and available on the Polish market since 1955, word trade mark POLOPIRYNA C R-55084 protected since 1976, the word trade mark CALCIPIRYNA R-96016 protected since 1994 and the word trade mark Etopiryna R-59876 protected since 1983.

The Polish Patent Office did not agree with Bayer’s arguments and dismissed the invalidation request in its decision of 3 February 2009, case file Sp. 564/07.

Trade mark law, case Sp. 213/06

February 19th, 2009, Tomasz Rychlicki

The German company Berentzen Brennereien GmbH from Haselunnein Germany has requested invalidation of the word trade mark Pushkin R-110616 registered for Belvedere Company in class 33 for alcohol beverages. The request was based on articles 6 and 8(i) 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) A trademark shall be registrable on behalf of a specific enterprise, but only in respect of goods falling within its field of economic activity.
(2) The registration of a trademark for specific goods shall not prevent registration of other trademarks on behalf of the same enterprise in respect of the same or different goods falling within its field of economic activity.
(3) The registration of a trademark for specific goods shall not prevent registration of the same trademark on behalf of the same enterprise in respect of other goods falling within its field of economic activity.

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

The German company alleged that the mark has been submitted by entrepreneur who had no licence to operate as an alcohol dealer but it was engaged in exports of alcohol. The disputed trade mark was then transferred to Belvedere company. The German company also claimed that the applicant was acting in bad faith because it was aware of the fact that such a sign exists on the same competitive Western markets. The PPO dismissed the request in its decision of 20 January 2009 case act signature Sp. 213/06. The PPO did not agree that trade mark registration was done against provisions of article 6 because, according to the judgment of the Supreme Administrative Court of 16 September 2004, case file GSK 774/04, the export of alcohol from the country did not require a licence.

Trade mark law, case Sp. 421/07

February 14th, 2009, Tomasz Rychlicki

On 18 April 2002 Polish entrepreneur Zaklady Chemiczne EMICHEM Michal Mierzwa from Poznan applied to register the word-figurative trade mark JAX in class 3 for goods such as washing preparations, body and hair care preparations, windshield preparations and washers, car-care preparations, stain removers, softening and bleaching preparations. The Polish Patent Office registered this trade mark R-171570 in its decision of 16 March 2006.

R-171570

Colgate-Palmolive Company, a Delaware corporation, New York (US), filed a request to invalidate the right of protection based on article 132(2)(ii) 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:
(ii) is identical or similar to a trade mark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark.

The US company claimed earlier word-figurative trade mark registration AJAX Floral Bouquet R-135207. Colgate-Palmolive argued that there exist a high a risk of misleading the public because the disputed trade marks shared visual, aural and conceptual similarities.

R-135207

The PPO accepted Colgate-Palmolive’s arguments and invalidated JAX trade mark in its decision of 20 February 2009, act signature Sp. 421/07.

Trade mark law, case Sp. 10/08

February 10th, 2009, Tomasz Rychlicki

On 7 November 2002, the Polish company DAKAR from Krasne by/Rzeszów applied for word trade mark registration for DAKAR in class 3 for goods such as preparations for cleaning and maintenance of upholstery and body of a car, cosmetics for cars, in class 27 for goods such as car rugs and also in class 37 for services such as maintenance, repair, overhaul, cleaning, and car tuning. The Polish Patent Office registered this sign (R-174205) in its decision of 6 June 2006. French company (société par action simplifiée) PARIS-DAKAR filed a request for invalidation of the right of protection based on article 132(2)(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.

2. A right of protection for a trade mark shall not be granted, if the trade mark:
(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 trade marks accordingly.

The French company claimed that the PARIS-DAKAR and DAKAR brands are widely known beacause of the world-wide popular rally which has around thirty years of tradition. In PARIS-DAKAR opinion the Polish company applied for trade mark protection knowingly. It works in the cars trade which may causing a risk of association between the registered mark and the French company’s brand and it has been done in order to use its popularity and reputation.

R-174205

The Polish company argued that, when it applied for trade mark registration, the indication Paris-Dakar was usually associated with the rally, not “Dakar” itself. In addition, there are other trade mark registrations consisting of Dakar word, which means that such sign may function on the market.

On 9 December 2008, the Polish Patent Office postponed the hearing in this case case file Sp. 10/08, and ordered the French company to supplement its evidence.

Industrial design, case VIII SA/Wa 332/08

February 10th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 4 February 2009, case file VIII SA/Wa 332/08, ruled that not every method of disclousure of an industrial design is relevant, as it provides the opportunity to familiarize with it to persons acting in a professional manner in the same sector. It must be remembered that in accordance with the views of the legal doctrine and commentators, this possibility must be a real, materially relevant, and therefore it has to occur in circumstances that allow to assume the actual knowledge, which is the result of normal proffesional activity, specialized in the given sector. Therefore, it is not about the mere fact of disclosure of a design, but about whether specific people have actually an opportunity to get acquainted with the design.

This case concerned the industrial design “Podstawa słupa” (in English: column base), Rp-6991.

Wzór Przemysłowy 6991

See also my posts entitled “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case II GSK 612/08

January 28th, 2009, Tomasz Rychlicki

The Supreme Administrative Court (SAC) in a judgment of 27 January 2009, case file II GSK 612/08, held that it cannot deny the legitimacy to submit, in the opposition proceedings before the Polish Patent Office, a request for invalidation of a right in industrial design registration, to a person, who was charged with the allegation of committing the offense of assigning to itself the authorship of this exclusive right (plagiarism), if that person alleges and argues that the questioned right was granted in violation and against of legally binding regulations.

This judgment concerned the industrial design “Rozetka pod pieczęć i plastyczną oprawę dokumentów” (in English: Rosette under seal and plastic binding documents), Rp-632.

See also “Polish case law on industrial designs“.

Trade mark law, case VI SA/Wa 1620/08

January 22nd, 2009, Tomasz Rychlicki

On 22 January 2003 the Spanish company Aceites del Sur-Soosur, S.A. applied to the Polish Patent Office to register the word trade mark LA ESPANOLA Z-260063 in class 29 for goods such as edible oils and fats. The PPO rejected this trade mark application, justifying its decision case file DT-51/08 on the basis of Article 129(1)(ii) and Article 129(2)(ii) 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.

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

Article 129(2)(ii)
2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(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.

The representative of the Spanish company claimed that Aceites del Sur-Soosur had a long tradition in the production of such goods and is well-known in many countries, and that there is also a CTM registration for the word-figurative trade mark LA ESPANOLA CTM no. 000132092, however, the PPO found that the sign indicated the word origin of goods from Spain. In its original language it means “the Spanish” or “Spain”. And in PPO’s opinion Spain is also famous for production of goods of this type, such as oils.

Aceites del Sur-Soosur filed a complaint before the Voivodeship Administrative Court in Warsaw but the VAC in its judgment of 18 November 2008, case file VI SA/Wa 1620/08 fully agreed with the Polish Patent Office and stressed the fact that such sign, while presented without any graphic element, has purely-for-information status, which points to the place of origin of goods imported from Spain. This decision is not yet final.

Trade mark law, case Sp. 451/07

January 22nd, 2009, Tomasz Rychlicki

On 1 April 2003, the Polish company Scooter sp. z o.o. from Bytom applied to the Polish Patent Office for the word-figurative trade mark CITY ROCK Z-262984 for goods and services in classes 9, 12, 21, 24, 25, 35, 36, 40, 41, 42, 43. After almost three years, the PPO granted the right for protection R-173752 in its decision of 6 March 2006.

R-173752

Hard Rock Holdings Limited from the UK filed a request for invalidation of the right of protection based on provisions included in article 131(2)(i) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in 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 shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,
and article 132(2)(ii):
2. A right of protection for a trade mark shall not be granted, if the trade mark:
(ii) is identical or similar to a trade mark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark,

The request for invalidation was limited by the UK company to goods in classes 9, 25, 41 and 43. Hard Rock Holdings provided earlier trade mark registrations HARD ROCK CAFE R-97170, Hard Rock CAFE R-126149, Hard Rock CAFE R-140353. The company claimed that there existed visual, aural and conceptual similarity between the disputed signs which might lead to consumers to confusion. Hard Rock Holdings argued that HARD ROCK CAFE trade marks had a reputation and were used as a cult brand for restaurants in many countries. The president of the Polish company, acting without a professional representative, claimed that the signs were not similar.

The Polish Patent Office dismissed the request in its decision of 6 November 2008 act signature Sp. 451/07. According to the PPO, there was no risk of confusion between the trade marks. The PPO also stressed the fact that the word “rock” cannot be proprietarized by one entrepreneur because it indicates the genre of music. As regards the reputation, the PPO said that it is difficult to talk about HARD ROCK CAFE’s reputation because it has been present in Poland since 2007 an,d for the time being, only in Warsaw, while the contested trade mark was applied for much earlier, in 2003.

Trade mark law, case Sp. 27/06

January 19th, 2009, Tomasz Rychlicki

On 9 February 2000, the Polish Patent Office granted the right of protection for the word trade mark PICKENPACK R-118206 applied for on 27 September 1996, the Polish entrepreneur Katarzyna Warzocha from Koniecpol, for goods in classes 29 and 30 such as frozen meat products, fish, poultry and game, frozen fruits and vegetables and frozen flour products.

R-118206

German company Pickenpack-Hussmann & Hahn Seafood GmbH from Lüneburg owned an international registration for the word-figurative trade mark PICKEN PACK IR-520553 in class 29 for goods such as meat, fish, poultry and game as well as cooked fruit and vegetables, cooked take-away dishes mainly consisting of meat, fish, potatoes and/or other vegetables; all these goods are deep frozen. The registration was granted in the Republic of Poland on October 2008. German company filed before the Polish Patent Office a request to declare the lapse of trade mark protection based on provision of article 169(1)(i) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in 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.

1. The right of protection for a trademark 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 for its non-use exist,

Katarzyna Warzocha argued that she started to use the contested trade mark in the previous two years during talks with contractors interested in her offer. She provided information that the PICKENPACK trade mark had been used for frozen products, advertising flyers, business cards and offers of cooperation. Katarzyna Warzocha claimed that the goods labelled with this trade mark were present at the Polagra fair in the years 2001-2005. She also declared that she was able to provide statements of companies, which took supplies of frozen products poduced by her company. German company argued that this was not real evidence of actual use. On 6 November 2008, the PPO postponed the hearing in this case act signature Sp. 27/06 to supplement the evidence.

Trade mark law, case

January 17th, 2009, Tomasz Rychlicki

The Polish company Arenda Biuro Obrotu Nieruchomosci from Warsaw filed before the Polish Patent Office a request for invalidation of the right of protection of the trade mark ARENDA WOJCIECHOWSCY R-178655, which was registered in classes 35, 36, 37 and 42. The company from Warsaw claimed that there was a risk of confusion between the trade mark ARENDA WOJCIECHOWSCY and the trade mark ARENDA R-94766, which was applied for with an earlier priority on 3 November 1994 and registered on 27 March 1997 for services in class 36 for real estate agency and brokerage.

R-178655

ARENDA S.C. from Czestochowa argued that claims based on article 132(2)(ii) of the IPL were unfounded because an assessment of the overall impression excludes the risk of confusion as regards the disputed trade marks

2. A right of protection for a trade mark shall not be granted, if the trade mark:
(ii) is identical or similar to a trade mark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking association with the earlier mark,

The company argued that both signs have different graphics, which clearly distinguishes them. Another argument was that the PPO had already registered six different trade marks with the ARENDA element.

R-94766

Despite the fact that, in the Polish language, “arenda” formely meant “lease” or “tenancy”, the PPO had invalidated the right of protection for a trade mark in part – in class 36 in its decision of 27 October 2008 act signature Sp. 487/07.

Trade mark law, case VI SA/Wa 1388/07

January 15th, 2009, Tomasz Rychlicki

On 7 September 2000, MGT Parfum Création from Hofheim-Wallau in Germany applied to the Polish Patent office to register the EAU DE TOKYO trade mark for goods in class 3. On 11 May 2004, The PPO issued a positive decision on the registration of EAU DE TOKYO R-153843 trade mark.

R-153843

Kenzo Societe Anonyme from France filed a request for invalidation of the right of protection claiming it was granted in violation of articles 8(1) and 9(1)(i) 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 later amendments.

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

Article 9
(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;

The request had to be based on the old Act because the trade mark application was filed while the old act was in force. KENZO was claiming the similarity of marks, KENZO TOKYO BY KENZO R-207663 and TOKYO BY KENZO R-207662 and their reputation. The French company has also argued that the German company imposes its trade mark on similar bottles to Kenzo’s bottles. On February 2007, the PPO rejected the invalidation request and KENZO has appealed this decision.

R-153843-3D

The German company did not respond to the correspondence on this matter and no other address was known. During earlier hearings on July 2008, the Voivodeship Administrative Court in Warsaw had to ask the President Polish Chamber of Patent Attorneys to designate a curator for the German company. The curator did not agree with KENZO arguments. He pointed that the assessment had to be a comparison of the signs as they were registered, and not the packaging.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 November 2008 case file VI SA/Wa 1388/07 rejected the appeal. The Court acknowledged the fact that the PPO did not negate the reputation of KENZO trade marks. According to the VAC, the PPO was not obliged to take into account KENZO’s reputation, since the Office found that the disputed signs were not similar. The Court did not agree with the argument that these signs had similar associations because cosmetics marked by them come from Japan. According to Judge Olga Żurawska-Matusiak such conclusion would be too far-reaching. She also pointed that the PPO has properly assessed both trade marks. The issue of passing off of packages should be decided by a civil court in a different proceedings.

Trade mark law, case Sp. 574/07

January 10th, 2009, Tomasz Rychlicki

On 19 April 2004 the Polish company Browar AMBER Andrzej Przybylo from Bielkówko applied for two word-figurative trade marks HANZA PILSENER Z-279466 and PRIVAT BRAUEREI EST 1664 HANZA PILSENER EXPORT PREMIUM BIER Z-279465. However, the Polish Patent Office was not able to grant them because there existed an earlier registration for the word trade mark HANSA R-77233, first applied for on 30 December 1991 by German company Dortmunder Actien-Brauerei Aktiengesellschaft for goods in Class 32 such as beer. The right of protection was granted by the PPO on 3 March 1994.

Z-279466

Browar AMBER filed before the PPO a request to issue a decision on the lapse of the right of protection for the HANSA trade mark. The request was based on Article 169(1)(i) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in 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.

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 exists.

On 18 November 2008, the Polish Patent Office postponed the hearings case file Sp. 574/07 and ordered the German company to provide evidence of trade mark use. The PPO asked for translated invoices confirming the sale of beer under the brand HANSA and for evidence to demonstrate the actual use of that mark. Dortmunder Actien-Brauerei Aktiengesellschaft has a 2-month deadline to file such documents.

Trade mark law, case VI SA/Wa 214/08

December 21st, 2008, Tomasz Rychlicki

On 7 February 1996, the American company Tiffany & Broadway Inc. Div. of Texpol has applied before the Polish Patent Office (PPO) to register the word-figurative trade mark “TIFFANY & BROADWAY, Inc.” R-153643 in class 3 for goods such as hair care preparations, washing and cleaning preparations, teeth cleaning preparations, shoe polish, skin-care preparations, dish washing preparations, deodorants, perfumes, eau de Cologne, in class 5 for goods such as dietetic substances adapted for medical use and food for babies, in class 8 for goods such as cutlery and razors, in class 16 for paper tablecloths, in class 18 for trunks and suitcases, umbrellas and parasols, saddlery, belts, gallantry made of leather and imitation leather as well as for goods in classes 24, 25, 28, 30, 32, 33, 34, 35, 36, 38, 41, 42, 43, 44, 45. The PPO granted the application on 1 April 2004. In this case the term of 8 years of trade mark application proceedings was not a joke at all.

The cancellation proceedings were started by another American company – Tiffany & Co. from New York – based on article 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.

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

The New York’s company claimed that its trade marks had a reputation and were famous and that the Tiffany & Broadway registration was made in bad faith, leading to the watering down (early Polish translation of dilution concept) of Tiffany’s trade marks. The PPO agreed and invalidated the contested trade mark. Tiffany & Broadway appealed to the Voivodeship Administrative Court (VAC) in Warsaw. The company noted that Tiffany & Co. did not provide evidence of any business activity in Poland and that none of New York’s company trade marks had been registered in Poland. According to Tiffany & Broadway article 8(1) does not provide protection for famous marks, or marks that should be protected despite the absence of registration. The PPO responded that although it is true that the goods that are signed by Tiffany & Co trade marks are available in Poland only in the secondary circulation/market, but its trade marks are renowned and associated and perceived by consumers with luxury goods, among other things, thanks to the novel and the movie “Breakfast at Tiffany’s“.

The Voivodeship Administratice Court in Warsaw dismissed the appeal in its judgment of 24 October 2008, case file VI SA/Wa 214/08. The Court held that there is no doubt regarding the reputation of TIFFANY trade mark. There are very few so strong and famous brands. In the court’s opinion the Tiffany’s trade mark is very attractive and it has huge advertising value. Tiffany has also proved its international reputation and it was not obliged to prove its existence specifically in Poland, because, in the Court’s view, the reputation is international/world wide – across borders. The VAC held that Tiffany & Broadway was aware of the existence of Tiffany’s reputation and trade mark registration for Tiffany & Broadway could lead to dilution of Tiffany’s trade marks.

Trade mark law, case Sp. 538/07

December 20th, 2008, Tomasz Rychlicki

On 3 March 2005, the Polish company “KILARGO” Spólka z o.o. from Chechlo I applied for the word-figurative trade mark Sweetlips for goods in class 30 such as ice creams. The Polish Patent Office has granted the right for protection on 18 September 2006. The registration was opposed by Lidl Stiftung & Co.KG. The company claimed that Kilargo’s registration was granted in violation of article 132(2)(ii) 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.

A right of protection for a trademark shall not be granted, if the trademark:
… is identical or similar to a trademark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark

Lidl Stiftung has provided evidences of an earlier trade mark – SWEETKIDS – which was applied for on 7 May 2004, in class 30 for goods such as chocolate and confectionery products, in particular chocolate bars, chocolate candies, candies. On 22 December 2006, the PPO has issued a decision on granting the right or protection to SWEETKIDS R-185112 trade mark.

R-178936

The Polish Patent Office in its decision of 22 October 2008 case Sp. 538/07 did not find similarities between disputed trademarks, or goods they are intended to mark, since ice creams are specific products to sweets. In PPO’s view the “sweet” part is to be found in many trade marks that have been already registered and therefore it has hardly distinctive capabilities. The decision is final.

Trade mark law, case Sp. 233/07

December 19th, 2008, Tomasz Rychlicki

On 25 July 2001, Polish entrepreneur Leokadia Matuszewska from Wroclaw performing her business under the firm MADERA has applied for trade mark registration for word-figurative sign SHARP in class 9 for goods such as diving cylinders, divers’ suits, diving suits, diving gloves, diving masks, life jackets, diving apparatus, breathing apparatus, except for artificial respiration, breathing apparatus for underwater swimming, life buoys, signalling buoys, in class 25 for goods such as anti-sweat underwear, sweat-absorbent underclothing, ski boots, football shoes, caps, leg warmers, gymnastic shoes, bathing caps, bath sandals, bathing suits, bath robes, bathing trunks, cyclists’ clothing, water ski suits, beach shoes, sports shoes, waterproof clothing, headbands, socks, briefs, shorts, clothing for gymnastics, and in class 35 for goods such as business and service transactions agency, trade contractors’ agency in the field of skiing equipment and accessories, table tennis equipment, lawn tennis equipment and squash equipment, snowboard, windsurfing, ant-swear clothing, socks, sports shoes, shoe impregnants, clothing, tents, tourist fuels and fittings, bicycles and bicycle accessories, mountain tourism, swimming and diving apparatus and equipment, paragliding and equipment, organization of exhibitions for commercial or advertising purposes, trade fairs, marketing in this field. On August 4, 2005, The Polish Patent Office has granted the right of protection for Sharp R-167147 trade mark.

Japanese company Sharp Kabushiki Kaisha has filed a request for invalidation of the right of protection claiming it was granted in violation of article 8(1) and (2) 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.

A trademark shall not be registrable if:
(i) it is contrary to law or to the principles of social coexistence;
(ii) it infringes the personal or economic rights of third parties;

The request had to be based on the old act because the trade mark application was filed while the old act was in force. The Polish Patent Office in its decision of 3 July 2009 case Sp. 233/07 invalidated the registration.

Industrial design law, case VI SA/Wa 1827/08

December 12th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 11 December 2008, case file VI SA/Wa 1827/08, ruled that the protection of an industrial design may only apply to the appearance of an object – its external appearance, not to its internal structure. The cassation compliant bought before the Supreme Administrative Court was rejected in a decision of 16 December 2009, case file II GSK 238/09.

Wzór Przemysłowy Rp-9201

This judgment concerned the industrial design “Zadaszenie drzwi” (in English: door canopy), Rp-9201. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case VI SA/Wa 1510/08

November 26th, 2008, Tomasz Rychlicki

BWS Poland sp. z o.o. applied for trade mark registration for the word-figurative sign “SUNLINE TOKAJI FURMINT” Z-246957 on 26 February 2002, in class 33 for alcoholic beverages. The Polish company BARTEX-Bartol reported observations as to the existence of grounds that may cause a right of protection to be denied. BARTEX-Bartol claimed that Polish Patent Office (PPO) would undermine the protection of third-party rights, namely the Hungarian company Tokaji Kereskedőház Rt., because the sign that BWS applied for contained the name of the Hungarian Company. BWS explained that it imported wine from another Hungarian company and that the label “SUNLINE TOKAJI FURMINT” would not lead customers in confusion as regards the orgin of goods.

However, the Polish Patent Office issued a decision denying protection rights for a trade mark that BWS has applied for. The PPO held that granting protection rights would be against provisions included in articles 131(1)(iii) and 131(3) 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.

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.

(…)

Article 131(3) of the IPL
In the case of wines and spirits, any trademark, which incorporates geographical elements discordant with the true origin of the good, shall be considered as a trademark misleading the public.

BWS appealed to the Voivodeiship Administrative Court (VAC) in Warsaw. During the hearings, the company claimed that it imported the wine from the vineyard of Vagra Pincészet Kft, which sells Tokaji Furmit Sulina wine, and that the Hungarian company agreed the sign could be used by its Polish business partner. BWS argued that Tokaj and Furmit means the region and strain of grapes. BWS presented an opinion that it applied for trade mark protection for a specific word-figurative sign, and that it had no intention to prohibit anyone to use these names.

The Polish Patent Office emphasized that TOKAJI is geographical indication of this kind of alcoholic beverage, which is used by manufacturers in Hungary as had been already agreed with the European Commission (and procedures for the arrangements are discussed with Slovakia) – this is why the PPO is obliged to take such term into account as a GI. The PPO also pointed out that the company may distribute the wine under SUNLINE name and to use it toghether with TOKAJI word, but it is not allowed to gain exclusive rights in TOKAJI and FURMIT signs. The VAC in judgment of 25 September 2008, case file VI SA/Wa 1510/08, has fully agreed with PPO’s decision and dismissed BWS appeal. The judgment is not final.

Industrial design, case VI SA/Wa 1054/08

November 10th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 4 November 2008, case file VI SA/Wa 1054/08, ruled that the requirement for the issuance of a preliminary decision by other authority or a court, is one of the conditions for stay of the administrative proceedings pursuant to article 97 § 1 point 4 of the Polish Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments, but while looking for the justification that there exists the preliminary issue in a given case, one has to establish a causal connection between the settlement of the case and the preliminary issue. The lack of such connection makes the stay of proceedings under article 97 § 1 point 4 of the APC unacceptable. The issue of the infringement of the exclusive right referred to in article. 284(6) of the IPL, and civil claims relating thereto are decided by a civil court under civil procedure and the question wheather the use of industrial design that violates personal rights or property of third parties within the meaning of article 117(2) of the IPL, which come with the Polish Patent Office duties (the condition for invalidation of the rights in registration) are separate issues. Therefore, there is no reason to assume that the preliminary issue occurs in this case because the civil court is a proper one to settle the matter of the infringement of an exclusive right.

This case concerned the industrial design “Butelka cylindryczna” (in English: cylindrical bottle), Rp-5873.

Wzór Przemysłowy 5873