Archive for: trademark law

Copyright law, case I C 471/16

April 22nd, 2016, Tomasz Rychlicki

Niezależny Samorządny Związek Zawodowy “SOLIDARNOŚĆ” (Independent Self-governing Trade Union “Solidarity”), the owner of the figurative European Union trade mark EUTM no. 014026454, sued Czesław Mozil, a Polish singer known also as Czesław Śpiewa (Czesław sings), for the infringement of copyrights and personal interests. Mr. Mozil has recorded and published a song and a TV clip entitled “Nienawidze Cię Polsko” (I hate you Poland) in which the well-known and iconic “SOLIDARNOŚĆ” logotype was also presented. NSZZ “SOLIDARNOŚĆ” demanded 500.000 PLN of compensation.

The District Court in Kraków in its judgment of 8 April 2016 case file I C 471/16 dismissed the case. The Court held that the logo was used in the video as a symbol of Poland and as a Polish identity, and not as a logotype that identifies a trade union, so there was no infringement of personal rights. Any attempts to limit forms of artistic expression would violate the constitutional principle of freedom of artistic expression. The judgment is not final.

Trade mark law, case II GSK 371/14

April 10th, 2015, Tomasz Rychlicki

On 5 May 2010, PLAY Brand Management Limited applied to the Polish Patent Office for the right of protection for a single color trade mark Z-369967 defined in PANTONE scale as 2627C, for goods and services in Classes 9, 35 and 38.

The Polish Patent Office refused to grant the right of protection and decided that the applied sign was not inherently distinctive in relation to communications services for mobile phones, and the applicant has not demonstrated sufficiently that the mark has acquired distinctivenes through use. PLAY submitted request for re-examination of the matter. The PPO ruled that the sign in question may serve as a trade mark, since it was applied graphically and identified using the code recognized at international level, i.e. Pantone number. Such a figurative representation of a single color is in line with the requirements set for a designation that in order to fulfill its function as a trade mark must be clear, precise, complete in itself, easily accessible, understandable, fixed and objective. However, while analyzing the distinctiveness of the applied trade mark in concreto, the PPO stressed that, according to settled case-law, the essential function of a trade mark is to guarantee to the consumer or end user the identity of the origin of the designated goods or designated services, by allwowing him to distinguish the goods or services from the goods or services of different origin. The goal of distinctiveness of a trade mark is to provide a given sign with such features that in the minds of market players they will clearly indicate that the product (or service) marked in this way is derived from the specific entity. Therefore, the attention sould be paid to the customary use of the trade mark, as a designation of origin in the specific sectors, as well as the perception of relevant consumers. In the opinion of the PPO when it comes to color per se, the existence of distinctiveness (without any prior use) is possible only in exceptional circumstances, in particular, when the number of goods or services for which the trade mark was applied for is very limited and the relevant market is very specific. Those conditions must be interpreted in the light of the public interest, which is based on the fact that the availability of colors cannot be unduly limited for all other entrepreneurs. The PPO noted that the modern technology allows to generate an almost infinite number of shades of each color, but in assessing whether they differ from each other, one should take into the perception of a relevant group, and therefore the average consumer. The number of colors that people are able to actually identify, is small, therefore the number of colors available as potential trade marks that would allow for distinguishing the goods had to be regarded as very limited. Moreover, the market for mobile services is not narrow and specific. Such market does not only cover telecom operators, but it is a collection of current and potential buyers of a product or service, respectively, its size depends on the number of buyers that express interest in all products, with an adequate income and availability of products for purchase. Market size is a characteristic that describes the quantitative state of the market at a given time in number of consumers (users) of a given type of goods or services. The PPO stated that the scale of Pantone, as the RAL or CMYK scales, is a very precise tool used to describe the color, but little practical from the standpoint of conditions of a normal trade and market turnover. The description of the Pantone color will not be a sufficient indication for the average consumer. The PPO also decided that less than four years (the company started its operation in 2007, and market survey evidence was conducted in 2011) could not be considered as a sufficient period to establish that the sign was in long-term use. In the context of proving that the sign has acquired secondary meaning, such time was certainly too short. PLAY Brand Management filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 9 October 2013 case file VI SA/Wa 1378/13 dismissed it. The Court ruled that the PPO properly examined all the evidence material and properly justified its decision. The VAC as the PPO relied on the opinion of legal commentators and the so-called “color depletion/exhaustion” theory. According to this concept, the number of colors that the human eye is able to recognize is small and limited. Therefore, none of the colors should be subject to anyone’s “ownership”, or generally speaking – the exclusive right, and these colors should be keept in the public domain, and therefore freely available for all entrepreneurs. The theory of shades’ confusion support the first one. The second provides that human perception is so limited that the average consumer is not able to distinguish between a large number of shades of different colors. Applying both theories to present commercial realities it should be borne in mind that the majority of trade marks exists in an environment where decisions on the purchase of goods or use of services are made hastily, without much hesitation on the part of consumers. It is difficult to expect that consumers will conduct an analysis and comparison of similar shades of color, and on this basis, they will be associating the product with its origin. The Court also agreed that the acquired distinctiveness has not been proven. Surveys were conducted in a group consisting of 1000 respondents who use mobile phones and thus who should have knowledge about the market and mobile network operators. However, these people differently responded to the two questions: i) with which mobile operators’ brands do they associate the color, and ii) with which brands do they associate the color.
For the first question, 59% of respondents indicated PLAY as the operator, and only 11% respondents of the same group associated the color with PLAY while answering the second question, although the results should be concurrent, because the second question has not been addressed to random group of people, but a group of people who use mobile services. PLAY Brand Management filed a cassation complaint.

The Supreme Administrative Court in its judgment of 23 March 2015 II GSK 371/14 dismissed it.

Trade mark law, case II GSK 2803/14

March 20th, 2015, Tomasz Rychlicki

The Polish Patent Office dismissed the request to invalidate the right of protection for the word trade mark PHYTOLYZIN R-195394. The request was filed by Dr. med. Matthias Rath, the owner of the earlier International trade mark registration LyCin IR-813677. The Voivodeship Administrative Court in its judgment of 15 November 2012 case file VI SA/Wa 790/12 dismissed a complaint filed against this decision, and the Supreme Administrative Court in its judgment of 3 July 2014 case file II GSK 492/13 dismissed a cassation complaint filed by Dr. med. Matthias Rath.

On November 2014, Mr Rath filed before the Supreme Administrative Court a request for the annulment of previous proceedings, and a motion to reopen the proceedings and to issue an award of costs in accordance with prescribed procedure and also submitted as a supplement to the cassation complaint the decision of the Office for Harmonisation in the Internal Market of March 2013 on invalidity of the trade mark PHYTOLIZIN along with its certified translation into Polish. Mr Rath argued that the proceeding should be deemed by the Court as invalid because as the representative of the trademark owner appeared an attorney who submitted at the hearing a substitution of PoA as signed of July 2014. However, the power of attorney was invalid, because it was issued on behalf of another company, which was not a party to the proceedings.

The Supreme Administrative Court in its judgment of 9 January 2015 case file II GSK 2803/14 rejected the request and held that such motion is allowed if a party does not have the capacity and standing to bring proceedings or was not properly represented or if as a result of violations of the law was deprived of possible actions. However, the reopening cannot be requested if, before the judgment becomes final the inability to act ceased, the lack of proper representation was raised by way of objection, or a party has confirmed all procedural actions. These pleas and arguments for reopening, however, did not apply to Mr Rath. The argument for reopening of the proceedings was based on lack of adequate representation refered to the representation of the trade mark owner, not Mr Rath, and such a request may only be raised by a party that was not properly represented.

Trade mark law, case II GSK 2062/13

January 30th, 2015, Tomasz Rychlicki

Transformation and economic changes in Poland after 1990 left a lot of problems in the case of trademarks that belong to the state-owned enterprises. The case described below is one of many examples.

PPHU HERBAPOL spółka z ograniczoną odpowiedzialnością requested the Polish Patent Office to invalidate the word-figurative trade mark Herbapol Wrocław R-179901 that was registered for Wrocławskie Zakłady Zielarskie HERBAPOL Spółka Akcyjna for goods in Classes 3, 5, 30, 31 and 32. PPHU HERBAPOL argued that the questioned registration was applied for in bad faith and this sign is similar or identical to registration owned by PPHU HERBAPOL such as the word trade mark HERBAPOL R-00312 or the word-figurative trade mark HERBAPOL R-00356. PPHU HERBAPOL stressed that the goods are identical, are intended for the same consumers, on the same territory. The Company argued that according to the provisions of the Polish Industrial Property Law and regulations governing the use of Herbapol collective trade marks, the right to use this sign should be entitled only to PPHU HERBAPOL, and all affiliated entities, which also include HERBAPOL S.A., and the registration of an individual trade mark identical or similar to a collective trade mark Herbapol may only be made for the benefit of the PPHU HERBAPOL. Therefore, HERBAPOL S.A. obtained the right of protection “illegally”. It was emphasized that the right for the protection of the collective trade mark does not grant exclusivity to use the sign to one entity, because it is reserved for the organization with the right to its use by the organization and all of its affiliated entities. HERBAPOL S.A. is both a shareholder of PPHU HERBAPOL and the entity authorized to use the collective trade mark. Therefore, HERBAPOL S.A. was fully aware that its trade mark application was made without the knowledge and consent of PPHU HERBAPOL, which infringed PPHU HERBAPOL’s right of protection for the collective trade marks.

HERBAPOL S.A. requested the PPO to dismiss the case. The Company presented a genealogy of the transformation of the state owned company that was originally the sole owner of the Herbapol trade mark, and argued that PPHU HERBAPOL derives its priority to Herbapol sign “secondarily”. In this context, and bearing in mind that PPHU HERBAPOL does use the sign and not produce any goods under the name Herbapol, PPHU HERBAPOL is not the legal successor of the state enterprise. Consequently, HERBAPOL S.A. argued that PPHU HERBAPOL lacks of legal interest in seeking the invalidation of the disputed right of protection, and PPHU HERBAPOL did not object to the use of questioned sign in five years.

The Polish Patent Office invalidated the right of protection. The PPO decided inter alia that compared signs are similar in all three aspects, and the goods are identical or similar. HERBAPOL S.A. filed a complaint against this decision and argued that currently, between all companies included in PPHU HERBAPOL, there are no capital ties, on the contrary, they are in the classic competitive relationship, therefore as of the 1993/1994 they all began to use geographical designation like Wrocław, Poznań or Lublin alongside the sign Herbapol. Since then, HERBAPOL S.A. incurred large spending on advertising of its products thus the recipients of its products were able to distinguish the mark from other manufacturers that used the sign Herbapol. For these reasons, the HERBAPOL S.A. believed that its designation obtained independent and individual market position. HERBAPOL S.A. also argued that it has acquried the right to use Herbapol sign before PPHU HERBAPOL, because since 1959, it has used the word Herbapol in the company name. The state owned company Zjednoczenie Przemysłu Zielarskiego “Herbapol” in Warsaw applied for the right of protection for Herbapol trade mark in 1974, however in 1982 the company was dissolved and in its place another entity was created. Therefore, the right of protection has expired in 1984. PPHU HERBAPOL was founded in 1989 and in the same year the Company requested the Polish Patent Office to change the owner of all Herbapol trade marks in the Register kept by the PPO. From the foregoing, HERBAPOL S.A. brought the conclusion that the right to Herbapol sign should not derived by PPHU HERBAPOL from the “material priority”, but its right has kind of secondary nature.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 June 2014 case file VI SA/Wa 101/13 dimissed the complaint and ruled that because this case involved a collective trade mark, the Court had to indicate the nature of this type of sign. The main conclusion is that the right to collective trade mark belongs to the organization, but the organization’s affiliated entities are entitled to use the sign. The VAC cited recent judgment of the Supreme Administrative Court of 27 June 2007 case file II GSK 83/07 in which the SAC held that a collective trade mark serves many entities, although the right of protection is granted for a specific organization. The right to a trade and the right to use it separated. This institution should be distinguished from the joint right of protection, which is related to an individual trade mark, where such sign is intended for concurrent use by several undertakings who have jointly applied for the protection. In other words, the right of protection for a collective trademark does not grant exclusive rights to the use the sign by a single entity, but it’s owned by one organization, and it can be used by many entities associated in this organization. However, only the organization may be awarded the right, sell it, waive this right or request a change in the Register. Therefore, HERBAPOL S.A. infringed on registrations owned by PPHU HERBAPOL. With regard to the argument that PPHU HERBAPOL was not genuinely using the Herbapol collective trade mark, the Court noted that the organization may independently use the collective trade mark, however, the use of such sign only by entities affiliated also fulfills the conditions of trade mark use.

HERBAPOL S.A. filed a cassation complaint. The Supreme Administrative Court in its judgment of 9 January 2015 case file II GSK 2062/13 dismissed it.

Trade mark law, case II GSK 1096/13

December 8th, 2014, Tomasz Rychlicki

Dansk Supermarked A/S, the owner of word trade marks NETTO and word-figurate trade mark NETTO R-114747 filed to the Polish Patenet Office a notice of opposition to the final decision on the grant of a right of protection for the word-figurative trade mark NETO R-227788 that was registered for the goods in Classes 7, 11, 19, 20, 21 and services in Classes 35 and 42. The opponent pointed out that the services in Class 35 are identical to these that NETTO trade marks were registered for, and are directed to similar consumers through similar channels. Furthermore, the services in Class 35 are complementary to the goods and services from other classes. Dansk Supermarked A/S also argued that the compared trade marks are very similar. The dominant element of the sign in question is the word “NETO”, which is crucial for the perception of the character, and the figurative element is of secondary importance. The word “NETO” is entirely contained in the opposing signs, therefore the compared trade marks are “substantially similar” and that the average consumer may mistakenly associate the signs, and there is a real risk of misleading the public as to the origin of goods and services.

The owner, Polish company Galicja Tomaszek sp. z o.o., argued that the chain stores NETTO offer both food and industrial goods, and in this case, the opposing sign is used for the determination of the store itself or chain of stores. In contrast, the disputed mark is used to designate the goods.

The Polish Patent Office invalidated the right of protection. The PPO found that trade marks at issue are similar, and pointed out that all the goods in Classes 7, 11, 19, 20 and 21, are covered by the services included in class 35, and relate to the sale of these goods. Galicja Tomaszek sp. z o.o. filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 19 December 2012 case file VI SA/Wa 1808/12 dismissed it. The Court ruled that the term “providing a service” or “service” itself have no material content in the sense that the sign may be placed only on the elements used to provide a particular service, while a trade mark can be assigned to the goods, due to their material nature, and the consumer may directly related to the goods to which a sign is assigned. The similarity of the goods/services happens when the goods (services) covered by the earlier mark and the goods (services) covered by the later mark have the same purpose and method of use. Galicja Tomaszek sp. z o.o. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 18 September 2014 case file II GSK 1096/13 dismissed it.

Trade mark law, case VI Kp 84/14

September 1st, 2014, Tomasz Rychlicki

The Regional Court in Szczecin in its decision of 18 June 2014 case file VI Kp 84/14 ruled that the provisions of Article 305 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, that provides that anyone marking goods with a counterfeit trade mark, registered trade mark for which one does not have the right to use, for the purpose of introducing them on the market or anyone who is making a turnover of goods bearing such trade mark, shall be liable to a fine, limitation of freedom or imprisonment for a period of up to two years, does not apply to services for which a trade mark was registered for. The Court noted that the definition of goods in the IPL also covers services, however, incriminated actions that are subject to the provisions of Article 305 of the IPL, were defined very narrowly and does not apply to trade mark use in advertising services. According to the Court, this view is shared by legal commentators who agreed that the protection provided in Article 305 of the IPL only covers the rights to mark the goods by the entitled person. Based on the principle of guarantee in the criminal law, the Court did not agreed for the analogy in order to extend the protection. The principle of the guarantee of law provides that those who do not violate the rules of law will not suffer negative consequences from the state. This function is of particular importance in the system of criminal law. By establishing sanctions for violation of, or for exposure of certain goods (criminalization) the legislator expresses its will to secure respect for such interests (the protective function of law), but also ensures (guarantee function of law) those who did not commit a criminal act, that they will not be held criminally responsible. The Court added that due to the nature of the service, it can not be introduced to the market, or be subject to market turnover.

Trade mark law, case II GSK 582/13

June 26th, 2014, Tomasz Rychlicki

On 1 February 2007, SMYK GLOBAL ASSETS GmbH filed before the Polish Patent Office an opposition against the grant of the right of protection for the word-figurative trade mark lody SMYK NORDiS R-174465 that was registered for the Polish company NORDIS Chłodnie Polskie Sp. z o.o.

R-174465

SMYK GLOBAL ASSETS, the owner of the word-figurative trade mark SMYK R-151707 registered inter alia for goods in Class 30 such as confectionery and sweets, argued that both signs are similar and may cause consumers’ confusion. The questioned registration was also an attempt to use the trade mark that was known on the market for more than twenty years, and which has won the recognition of customers thanks to significant financial and organizational expenditures. SMYK also alleged violation of the right to the company name.

R-151707

NORDIS argued that the compared signs and the goods are not similar and there is no chance for confusion of potential buyers. The Polish company had applied for this sign in May 2003, because it should serve as a continuation of the word-figurative trade marks SMYK NORDIS NORDIS R-93343 and SMYK R-93586 that both lapsed on July 2003. NORDIS had the right to use all signs with the word elements SMYK and NORDIS, because both lapsed trade marks became the bar for registrations of new similar or identical signs for other entities, for two years after the lapse.

R-93343

SMYK GLOBAL ASSETS replied that the provisions of the Polish Industrial Property Law do not afford the institution of “continuation” of trade marks, and the modified sign does not derive legal force from the earlier marks, and the owner cannot be entitled to rely on the law that no longer exists.

R-93586

In 2008, the PPO dismissed the opposition. SMYK GLOBAL ASSETS decided to file a complaint, and the Voivodeship Administrative Court in its judgment of 20 May 2009 case file VI SA/Wa 2315/08 overturned the decision, and ruled that the PPO has made an invalid interpretation of the provisions of the Polish Industrial Property Law on the similarity of signs and the goods with regard to the likelihood of confusion. The Court found that the semantic analysis lead to the logical conclusion that the concept of the term “ice cream” falls within the term of “sweets”, and hence there exist homogeneity of goods bearing compared signs due to the fact that ice cream are goods of “the same kind” as sweets. The homogeneity of goods follows from the semantic analysis of the concepts and the nature of the goods such as “ice cream” (narrower term) and “sweets” (broader term). The VAC also noted that the word element SMYK that is present in both signs, is also endowed with a similar graphics. The case went back to the PPO for further reconsideration.

On 3 August 2009, NORDIS Chłodnie Polskie Sp. z o.o. requested the Polish Patent Office to decide on the lapse of the right of protection for the word-figurative trade mark SMYK R-151707 in part for goods in Class 30, becuse SMYK GLOBAL ASSETS failed to put this sign in genuine use on the Polish territory. SMYK argued that its trade mark was present on the market among others on candies available in SMYK’s stores that are located in big malls.

On December 2009, the Polish Patent Office decided that the right of protection for the word-figurative trade mark SMYK R-151707 lapsed as of 18 December 2008 in part for goods in Class 30 such as confectionery except chocolate and chocolate products, and candy except chocolate and chocolate products. The PPO also dismissed the opposition against the grant of the right of protection for the word-figurative trade mark lody SMYK NORDiS R-174465. SMYK GLOBAL ASSETS filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 20 November 2012 case file VI SA/Wa 397/12 dismissed it. The Court ruled that there was no violation of the company name, because at the time the disputed trade mark was applied, there was no conflict of interest between both parties, because the scope of activities of the two companies was different. SMYK GLOBAL ASSETS has not shown that the registration will disrupt the function of the name of its company, NORDIS manufactures ice cream, while SMYK GLOBAL ASSETS is a producer of items for children, including toys and clothes and was never engaged in the production or sale of ice cream, moreover, the proceedings revealed that NORDIS does not use the sign in a possible colliding area. The Court agreed with the PPO that the trade mark was not applied contrary to law, public order or morality, because this provision, as it was aptly pointed by the PPO, refers to the content or form of how the applied sign is represented. Such contradiction lies in the violation of moral norms, ethics and customs adopted in business. It occurs primarily in the signs of vulgar or offensive content or form. The VAC noted that SMYK might have confused this regulation it with another institution i.e. bad faith. Legal provisions relating to signs applied in bad faith and signs which are contrary to public policy or morality that are included in the Polish Industrial Property Law are separate premises examined in the trade mark application or invalidation proceedings. The Court emphasized that the first condition is associated with the behavior of the applicant, and the second with the sign. SMYK GLOBAL ASSETS filed a cassation complaint.

The Supreme Administrative Court in its judgment of 13 May 2014 case file II GSK 582/13 dismissed it.

Trade mark law, case II GSK 1885/12

June 10th, 2014, Tomasz Rychlicki

Polskie Towarzystwo Tatrzańskie (Polish Tatra Society) requested the Polish Patent Office to invalidate the right of protection for the the word-figurative trade mark POL.TOW.TATRZAŃSKIE 1873 R-101381 owned by Zarząd Główny Polskiego Towarzystwa Turystyczno-Krajoznawczego (Polish Tourist and Sightseeing Society). PTT argued that in 1994, the PTTK unlawfully applied for the trade mark in question. It was plagiarized traditional organizational badge of the PTT and at the same time a membership badge and a badge of honor of that Society. This organizational badge with the inscription “Pol. Tow. Tatra of 1873” and the image of chamois, was established in 1922. After the II World War, the Society ceased to function, but it has been reactivated in 1981 in times of Polish People’s Republic. The badge was re-established by the decision of the Chairman of the Committee on Youth and Sports of October 1990 issued according to the provisions of the Polish Act of 21 December 1978 on badges and uniforms, as a PTT’s badge. PTTK argued that the decision was challenged before the administrative bodies and courts.

R-101381

The PPO adjourned the proceedings until the Supreme Administrative Court in its final judgment of 2008 dismissed the cassation complaint against the decision of the Minister of Economy that refused to annull the decision of the Chairman of the Committee for Youth and Physical Culture of October 1990. The PPO invalidated the right of protection. PTTK filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 5 July 2012 case file VI SA/Wa 515/12 annulled the contested decision, and ruled it unenforceable. The Court held that the legal basis for invalidation of the trade mark were the provisions of the Article 8 point 5 of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments. Under this regulation, the registration of a sign which contains the name or crest of the Polish voivodeship, city or town, a reproduction of a Polish order, badge of honor and a military badge or sign, is unacceptable. Where justified, such a sign may be registered following approval by the competent authority state or the relevant organizational unit. In the filing date for registration of the invalidated trade mark, the Polish Act of 21 December 1978 on badges and uniforms was in force. Article 2 of that Act established three types of badges: a badge of honor, an organizational badge and an occasional badge. There was no doubt for the Court that the PTT has established an organizational badge. Clearly, it was not a badge of honor, because the PTT has not preserved the procedures required for its establishment. In turn, Article 8 point 5 of the TMA introduces inadmissible registration of a sign containing a badge of honor, not organizational badges. The VAC ruled that the PPO has violated the substantive law while deciding this case. PTT filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 May 2014 case file II GSK 1885/12 dismissed it.

Trade mark law, case II GSK 244/13

May 22nd, 2014, Tomasz Rychlicki

On March 2008, the Polish Patent Office has granted to the Politechnika Wrocławska (Wrocław University of Technology) the right of protection for the word-figurative trade mark e e-Informatica R-204692, for goods and services in Classes 9, 16, 18, 25, 35, 41 and 42.

R-204692

Mr Piotr Chlebowski filed the opposition against the decision of the PPO, and argued that he works on the market (in business) under the business pseudonym Informatica, and has been using that term as a company name that was entered in the register of business activity in 2003. He also uses that name within “a website for his Internet domain”. The term Informatica is also used by Mr Chlebowski on business cards, in advertising, invoices and stamps. He argued that the questioned trade mark also violates his personal rights, because he has started the company under the name Informatica. In addition, he also enjoys the copyright to the term “Informatica”, and the use of that name by the Politechnika Wrocławska is also contrary to regulations provided in the Polish Act on Combating Unfair Competition.

Politechnika Wrocławska requested the PPO to dismiss the opposition and argued that the term Informatica cannot be deemed as personal or economic right or interest. There is no unfair competition because the name Informatica does not lead to consumers’ confusion as to the producer of goods or services.

The Polish Patent Office dismissed the opposition. The PPO ruled the Mr Chlebowski is entitled to his full company name, not only to the term Informatica, and the provisions of the Polish Civil Code raised by the opponent relate to the violation of personal interests, and therefore not personal rights. However, the the mere fact that someone applied for a trade mark consisting of a part of the name of another company is not yet an obstacle to the registration. It is required that the registration and use of the trade mark constitutes a violation of the right to the company name. The average consumer will considers the designation as descriptive for the goods and services related to information technology. However, the figurative element – the first letter “e” – plays the dominant role in the perception of the whole trade mark. The registration of a domain name informatica.pl does not create exclusive property rights that are effective against all (erga omnes – absolute rights). The right to use an Internet domain name is the “relative right” based on the contractual obligation that is effective only with respect to the domain registrar. Mr Chlebowski filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 September 2012 case file VI SA/Wa 917/12 dismissed it, and Mr Chlebowski decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 3 April 2014 case file II GSK 244/13 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that a name of enterprise (business or company) belongs to the category of personal and property rights, which are subject to legal protection, and that these rights may be infringed by the use of the trade mark, because the two signs (the company’s name and a trademark) both identify the company. The SAC noted that the VAC relied on provision of the Polish Commercial Code that for many years were no longer in force, and incorrectly stated that Mr Chlebowski, as a natural person conducting his business activities, is not entitled to the company name. While the the Polish legislature has regulated in the Civil Code in Section III titled “Entrepreneurs and their designation” the right to the company name, which is also entitled to an entrepreneur who is a natural person. Thus, in this case occurred primarily a conflict of a right to the company name and the right of protection for a trade mark. The Supreme Administrative Court stated in its previous case-law, that the name of a company (the firm) is used to identify and differentiate entities in legal and economic transactions. It also serves a carrier of certain information about the characteristics and qualities of their activities. Unauthorized interference with the functions of the company name infringes the right to the name. This infringement is not prejudiced by registration of a trade mark that is identical or similar to the name of another company. Exclusive rights to the company name (firm) are not absolute. Their limits are territorial and objective and are based on actual activity of an entity that uses a given name. Only within these limits a collisions between identical or similar company name and trademark may occur. If different fields of business activities of a person (legal or natural) that is entitled to the company name and the proprietor of a trade mark, do not lead to consumers’ confusion with regard to the identity of companies, or such proprietor of the later trade mark is not using the reputation associated with earlier (identical or similar) company name, it is difficult to talk about the collision of these two rights, and consequently an infringement of an earlier right to the company name by the later mark (see: “Trade mark law, case II GSK 31/06” and “Trade mark law, case II GSK 406/08“). Applying these considerations to the present case, the SAC ruled that the VAC should reconsider and establish such facts as from which time Mr Chlebowski had acted in the course of trade under the company, using in addition to his surname a designation Informatica, what was the scope and of that activity and whether there is a risk of consumers’ confusion as to the identity of his company and the owner of a disputed trade mark. As it was already established in the case-law of Polish administrative courts, while finding an infringement of personal or property rights of third parties by a trade mark registration, it does not matter whether there are specific facts of confusion in trade, i.e. consumers’ confusion as to the identity of the company and the sign. It is enough to determine the potential possibility (likelihood) of such confusion, that in case of companies carrying identical or convergent activities, seems inevitable (see the judgment of the Supreme Administrative Court of 30 March 2006 case file II GSK 3/06, published in electronic database LEX, under the no. 197239). While considering this case, the VAC should also pay attention to the unified position of both the Supreme Court and the Supreme Administrative Court expressed in the case law that in case of a collision between a company name and an applied and/or registered trade mark, the priority is given to the earlier right.

Trade mark law, case II GSK 146/13

May 7th, 2014, Tomasz Rychlicki

On September 2007, Mr Jarosław Spychała applied to the Polish Patent Office for the right of protection for the word trade mark LEGO-LOGOS Z-330692 for services in Classes 35, 36 and 41. The PPO informed the applicant that his trade mark is similar to series of signs registered and owned by LEGO Juris A/S. Mr Spychała argued that the applied sign is the neologism derived from the ancient Greek language, and the term LEGO simply means “to read, think or speak”, and the term LOGOS means “learning” in a broad sense. In academic and education circles the term LEGO-LOGOS is associated with a particular form of education in philosophy and in building moral attitudes. The mark is directed at people who wish to explore philosophy and knowledge.

The Polish Patent Office refused to grant the right of protection because the applied trade mark was similar to the word trade mark LEGO R-72961 that was registered with an earlier priority for almost similar services. Mr Spychała filed a complaint against this decision and argued that the fact that compared signs share the same identical word element is not sufficient to refuse the protection for the later trade mark. The most important was the subject of the applied trade mark – a philosophical concept developed by the applicant and its popularization.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 1201/11 dismissed the complaint. The Court noted that the PPO properly made the comparison of goods and services and did not erred in comparison of both signs. The VAC agreed with the PPO that the word element LEGO can also mean to fold or to assemble, and thus relate to specific products – blocks that are marked by registered trademarks of LEGO Juris A/S. The Court pointed out that the applicant while describing the project of philosophical education under the name LEGO-LOGOS has also showed that he drew the expression of LEGO from Danish language. Regardless of what language (Ancient Greek or Danish) the dominant element LEGO was taken, it is a word that does not exist in the Polish language. Its importance in ancient Greek or Danish is not understandable for the average Polish recipient of goods or services. It may be related to the characteristics of goods – just blocks marked with this sign. Mr Spychała filed a cassation complaint.

The Supreme Administrative Court in its judgment of 11 March 2014 case file II GSK 146/13 dismissed it.

Internet domains, case IV CSK 191/13

April 10th, 2014, Tomasz Rychlicki

The Polish company PASTA i BASTA Sp. z o.o. from Warszawa, the owner of the word-figurative trade mark pasta i basta 100 sposobów na makaron cafè R-212390 sued Restaurators Podlaszewscy Spółka Jawna from Toruń. PASTA i BASTA requested the court to prohibit Restaurators Podlaszewscy the use of restaurant name Pasta & Basta and to refrain from the use of Internet domain name pastaandbasta.com and to oblige the defendant to withdraw from the Polish Patent Office an application for the word-figurative trade mark pasta&basta Z-368187 and the withdrawal of the application for a Community trade mark and the award of 60.000 PLN.

R-212390.jpeg

The District Court dismissed the complaint and PASTA i BASTA decided to appeal. The Appeallate Court ordered Restaurators Podlaszewscy to cease the use of the name of the restaurant and refrain from using the website and ordered the defendant to pay 10.000 PLN. Restaurators Podlaszewscy filed a cassation complaint.

Z-368187

The Supreme Court in its judgment of 11 December 2013 case file IV CSK 191/13 held that if the competitor uses Internet domain name identical or similar to a registered trade mark, there may be trade mark infringement if such domain use may cause the likelihood of confusion as to the origin of the goods or services, or result in violation of the advertising function of the trade mark.

See also “Polish case law on domain names“.

Trade mark law, case II GSK 2005/12

April 8th, 2014, Tomasz Rychlicki

The Polish Patent Office dismissed the opposition filed by E.I. du Pont de Nemours & Company against the decision on the grant of the right of protection for the word trade mark TEFAPAK R-199130 that was applied for the Polish company SINOGRAF S.A.

E.I. du Pont argued that the sign TEFAPAK is similar to its trade mark TEFLON R-49573 that was registered in Poland in 1968, and to its CTM TEFLON that was registered in 1996. According to the US company, the compared goods are identical or similar, and the signs share the same prefix TEF, which could lead to consumers’ confusion.

SINOGRAF S.A. requested the PPO to dismiss the opposition, and argued that the goods are directed to competent consumers of the proper level of technical knowledge, who have knowledge and experience in the field of materials, and thus much greater possibility of distinguishing different trade marks than the average recipient.

The PPO dismissed the opposition and found that the trade marks at issue are not similar, since they have significantly different overall impression both in the the visual and aural aspects. The PPO noted that there is no likelihood of confusion and it could not include the likelihood of association, because the goods are targeted to specialized recipients. E.I. du Pont filed a compliant against this decision.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 301/12 dismissed it. The Court held that the Polish Patent Office correctly established all circumstances of the case. The VAC agreed that the goods are identical or similar, however, the Court did not agree with the argument that the compared signs are similar to the extent that could lead to likelihood of confusion. In the opinion of the Court, the trade mark are not similar, so arguments about the use of someone else’s reputation and the reputation of the trade mark can not be justified. Dissimilar signs can not induce associations of customers, so there can be no conscious imitation and benefit from someone else’s reputation. E.I. du Pont filed a cassation complaint.

The Supreme Adminitrative Court in its judgment of 20 March 2014 case file II GSK 2005/12 dismissed it.

Trade mark law, case II GSK 1542/12

February 17th, 2014, Tomasz Rychlicki

On August 2008, The Polish Patent Office granted the right of protection for the word-figurative trade mark TEFLEX Q R-211213 for goods in Class 9 such as optical apparatus and instruments, spectacle frames, sunglasses, eyeglasses, articles for the manufacture of spectacles, spectacle cases, chains for spectacles, sports eyeglasses, optical lenses, optical glasses, optical products, and services in Class 44 such as optical services, medical assistance, medical clinics, for the Polish company Krasnodębski i S-ka OPTIBLOK Spółka Jawna.

R-211213

Eschenbach Optik GmbH filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. The German company argued that the trade mark TEFLEX Q is similar to its CTM t-flex no. 001821651 that was registered for goods in Class 9 such as spectacles and spectacle frames. Moreover, it pointed out that the questioned trade mark has been applied for registration in bad faith, and its registration and use may lead to the infringement of the applicant’s property rights and the unfounded use of the reputation of the t-flex designation. The fact that the registered sign is confusingly similar and resembles t-flex brand for the same narrow class of products was an argument for the bad faith. Such action indicated the intention to use consumers’ knowledge of products bearing t-flex sign. The brand t-flex is a fanciful designation and it was extremely unlikely for the OPTIBLOK to apply for registration of the sign that was very similar. It was merely a coincidence. The German company noted that it conducts its business in more than 80 countries, including Poland. From the beginning, the Company manufactured and sold of glasses and optical devices, and TITANflex technology is one of the most important of its products. The Polish company is a competitor on the local market. The registration and use of the trade mark TEFLEX Q infringes the Community trade mark t-flex and violates the property rights of Eschenbach Optik GmbH. The existence of similar signs can result in negative consequences for clients and lead them to confusion with regard to the origin of goods. The infringement of the reputation of the t-flex sign was based on its dilution. While referring to the similarity of the goods, the German company noted that the services of class 44 are complementary to the goods in Class 9.

CTM no. 001821651

The Polish company argued that it did not act in bad faith, because before filing the trade mark application, it used services of a patent and trade mark attorney and therefore acted negligently. At the time of registration there was no identical or similar signs to TEFLEX Q mark. Additionally, the brand t-flex does not have distinctive character, because there are tens of thousands of products with the same name in the world.

The Polish Patent Office invalidated the right of protection for the trade mark TEFLEX Q R- 211213 because, it found that the characters are very similar. However, PPO did not agree with the argument that the application was made ​in bad faith. According to settled case-law and legal commentators, the mere fact that one party applies for a trade mark similar to a sign used by the other party is not deemed as acting in bad faith. The bad faith must be proved based on other factors than knowledge of market presence of similar brands and signs, such factors include for instance dishonesty in relation to the interests of another entrepreneur. The reputation of the trade mark t-flex was also not proved. The mere statement that the German company had its Polish subsidiary was not sufficient to prove that Eschenbach Optik GmbH was present on the Polish market before the questioned trade mark was applied.

The Voivodeship Administrative Court in its judgment of 17 February 2012 case file VI SA/Wa 1885/11 dismissed it and ruled that the PPO referred precisely and in detail to all facts and evidence of the case. OPTIBLOK filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 January 2014 case file II GSK 1542/12 dismissed it.

Trade mark law, case II GSK 1500/12

January 31st, 2014, Tomasz Rychlicki

The German company Aldi Einkauf GmbH & Co. oHG filed before the Polish Patent Office a request to decide on the lapse of the right of protection for the word trade mark ELDENA R-111776 registered for Piotr Maciejec and Robert Hrebowicz for goods in Class 3 such as cosmetics, soaps, perfumery, deodorants, bath lotions. Aldi Einkauf interpreted its legal interest from the provisions of the Polish Constitution and the Polish Act on Freedom of Economic Activity (in Polish: ustawa o swobodzie dzialalnosci gospodarczej), and argued that the owners did not genuinely used their trade mark for 5 years. As the owner of the word CTM ELDENA No. 003430188, Aldi also noted that the owners of the Polish registration opposed the use of Aldi’s sign in Poland. Mr Maciejewiec and Hrebowicz questioned the legal interest of the applicant claiming that the Aldi has not registered its business in Poland. The company Aldi sp. z o.o. from Chorzów was established and registered in the National Court Register (register of entrepreneurs) on January 2006, and the first stores were opened on 25 February 2008. Therefore, assuming that the company Aldi sp. z o.o. is kind of a representative of the applicant on the Polish territory, the beginning date to establish legal interest of Aldi Einkauf should be the start date of sale of the applicant’s products, as it happened on 25 February 2008. Mr Maciejewiec and Mr Hrebowicz deemed Aldi’s request as premature due to the fact that in the period from 14 January 2005 to 25 February 2008, the disputed right of protection did not restrict the applicant’s activities in Poland, and they decided not to discuss with the arguments on the lack of genuine use, nor to provide any evidence in this matter. Aldi Einkauf argued that it received a cease and desist letter from the owners of the questioned trade mark, and provided evidence that the Polish company Aldi sp. z o.o. is a licensee of the CTM ELDENA.

The Polish Patent Office decided on the lapse of the right of protection. The PPO ruled that Aldi Einkauf proved its legal interest to request for the lapse of the right of protection for the mark at issue, because this sign was a restriction on conduct of Aldis’s business, in which the Company intended to use the designation ELDENA. Aldi submitted the advertising prospect of Aldi’s stores in Poland from 2008, with the photos of a lotion and soaps marked with ELDENA sign, as the evidence of an intention to use the CTM No. 003430188 on the Polish market. The PPO ruled that Mr Maciejewiec and Mr Hrebowicz did not provide any evidence on genuine use of their trade mark. They decided to file a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 April 2012 case file VI SA/Wa 201/12 dismissed it. The Court ruled that the “collision” of two trade mark rights was sufficient to establish the existence of a legal interest to file a request for the lapse of the right of protection. In its essence, the legal interest (locus standi) lies in overlapping of legal spheres of two or more entities, in such a way that the right held by one entity interferes with the full enjoyment of the rights held by another entity.

The Supreme Administrative Court in its judgment of 8 January 2014 case file II GSK 1500/12 dismissed the cassation complaint filed by Mr Maciejewiec and Mr Hrebowicz.

Personal interest, case I ACa 841/2013

January 9th, 2014, Tomasz Rychlicki

The “Nigdy Więcej” (Never Again) Association and the “Zielone Światło” (Green Light) Foundation organized a social action entitled “Nazism never again on Allegro”. It was a protest against a Polish auction website Allegro.pl which allowed to buy and sell different Nazi gadgets and memorabilia. The Foundation together with a writer, artist and social activist Jerzy Masłowski prepared an illustration with Allegro.pl logotype in which in which two L letters were changed and shaped as the SS symbol. This illustration was used on postcards that were handed out to different people during the street-action that happened near Metro Świętokrzyska in Warsaw on 21 March 2010.

Stop Allegro

On 20 April 2010, the Foundation received a cease and desist letter from QXL Poland – the owner of Allegro. The Company requested the removal from all public places of all publications, photographs, posters and billboards, and other materials that included the altered trade mark. QXL demanded destruction of all the above mentioned materials and asked the Foundation to publish an apology on its website, as well as in the pages of Gazeta Wyborcza newspaper. The Foundation refused to comply.

Z-342240

QXL Poland sued the “Zielone Światło” foundation and Jerzy Masłowski for the infringement of personal rights. During the trial, the Foundation argued that it has conducted correspondence with Allego with regard to products with fascist symbols or products referring to fascist ideology, that were offered at different auctions. However, it has not brought the intended effect, because Allegro.pl did not remove these items from its website. For this reason, the Foundation organized the street action. The Foundation argued that from 8 June 2010, the provisions of Article 256 of the Criminal Code were amended.

Art. 256.
§ 1. Whoever publicly promotes a fascist or other totalitarian system of state or incites hatred based on national, ethnic, race or religious differences or for reason of lack of any religious denomination
shall be subject to a fine, the penalty of restriction of liberty or the penalty of deprivation of liberty for up to 2 years.

§ 22 The same punishment shall be imposed on anyone, who for the purpose of dissemination, produces, records or import, acquire, stores, possess, presents, transports or transfers a print, record or other item of the content specified in § 1 or being a carrier of the fascist, communist or other totalitarian symbolism..

§ 3 A crime is not committed by a perpetrator of a forbidden act specified in § 2, if he or she commits the said act in the course of artistic, educational, collectible or scientific activity.

The Foundation concluded that its action was a response to long-term omission of Allegro. The action was organized to draw the attention of relevant authorities and the public at auctions that poses a danger to others. It sought to protect an important public interest, and therefore was not unlawful. In addition, the Foundation argued that according to the legal doctrine the criticism aimed at improving the reality is not illegal, even if it is excessively expressive in description and in negative assessment, as well as it’s impolite way of expression and presentation of arguments, if it is justified by the importance of issues raised and the literary form that was used. Moreover, the scope of permissible criticism depends on the weight of social affairs, and in case of doubt, freedom of expression takes precedence, and in some cases even offensive criticism is acceptable. If the case requires so, the criticism might be very offensive, and it may even seek to destroy the enemy, for example, in the dispute against pedophilia or against the view that is glorifying Stalin. The Foundation argued also that a request for legal protection raised by Allegro cannot ban the Foundation and other individuals from expressing their critical opinions of the plaintiff’s conduct. Such behavior constitutes an abuse of the subjective right as decided by the Appeallate Court in Lódź in its judgment of 25 May 2006 case file I ACa 15/06, published in electronic database LEX, under the no. 512493.

On 9 November 20011, a lawyer representing the Foundation presented a legal opinion issued by Prof. Wojciech Sadurski. Prof. Sadurski wrote that there was no violation of personal interests. In the opinion of the author, the case brought by QXL Poland illustrates the conflict between two types of claims related to absolute rights protected by the law. The claims relating to freedom of expression, and intellectual property claims relating to the protection of trade marks owned by QXL Poland. Citing the case law of the Polish Constitutional Tribunal, prof. Sadurski argued that freedom of speech is superior to other constitutional rights and freedoms. He noted that limiting the right to freedom of expression by issuing a ban on speech, would violate the essence of the constitutional right to freedom of speech. Prof. Sadurski cited Smith v Wal-Mart Stores, 537 F.Supp.2d 1302 (ND GA 2008), however he pointed out that the Foundation does not conduct any commercial activity, and the risk of consumers’ confusions is clearly excluded. Please bear in mind that such opinions are treated by the Courts as private documents, not as the expert witness evidence/testimony. The case is pending and the next hearing is scheduled on 6 February 2012.

QXL Poland filed also a request for preliminary injunction. The District Court in Warsaw in its order of 20 January 2011 case file XXIV C 1035/10 dismissed it during a closed-door court session (in camera). However, the Appeallate Court in Warsaw in its decision of 5 May 2011 case file I ACz 671/11 decided to secure the claim of QXL. The Court prohibited the Foundation and Jerzy Masłowski from transmitting and disseminating on their websites of any publications or materials containing the questioned trade mark.

The District Court in Warsaw in its judgment of 13 March 2013 case file XXIV C 1035/10 ruled that the “Zielone Światło” (Green Light) Foundation infringed personal rights of Allegro, such as reputation and fame. The Court decided that the demonstrations against the sale of Nazi memorabilia and interference with the logo of the portal were too excessive and bore the risk of linking the portal with Nazi organizations.

The Appeallate Court in Warsaw in its judgment of 9 January 2014 case file I ACa 841/2013 dismissed Allegro’s claims. The Court noted that in this case there was a conflict of values, but also drew attention to the historical context of the sale of items referring to the Nazi ideology. The court held that undoubtedly there has been violation of the good name of the plaintiff – the name of the portal website, and in consequence, it could interfere with its business because some customers would not have positive opinions regarding the auction site. However, the rough means of expression that were undertaken by the Defendants, in order to remove the sale of a Nazi gadgets, excluded illegality. According to the Court this actions proved to be effective – have led to restrictions on the sale of Nazi’s memorabilia . What’s more important, the Court held that the Defendants acted to protect a legitimate public interest. The court ruled that artistic criticism of such business activities of an auction portal is not an unlawful action and deserves constitutional protection. The judgment is final.

Trade mark law, case II GSK 1539/11

October 28th, 2013, Tomasz Rychlicki

On January 2007, the Polish Patent Office granted the right of protection for the word-figurative trade mark JAVART R-184566, applied for JAVART Spółka z o.o. form Warsaw, for goods in Class 1 services in Class 35 and 42.

R-184566

Oracle America, Inc., the owner of the trade marks JAVASCRIPT R-110075, JAVA COMPATIBILE R-112620, JAVA DEVELOPER CONFERENCE R-116591, 100% PURE JAVA R-125493, intended to designate goods such as computer software, electronic equipment and/or services related to these goods, filed an opposition. Oracle argued that opposed trade marks are similar and used to designate identical or similar goods and services, which may lead to consumer confusion. JAVART argued that the opposition should be dismissed. The PPO invalidated the right of protection for the word-figurative trade mark JAVART R-184566 and decided that JAVA trade marks are known by a significant part of computer users, including developers around the world, also in Poland, and as such enjoy a worldwide reputation for software.

R-125493

JAVART filed a complaint against this decision, but the Voivodeship Administrative Court in Warsaw in its judgment of 20 January 2011 case file VI SA/Wa 111/10 dismissed it. JAVART decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 23 November 2012 case file II GSK 1539/11 dismissed it. The Court held that the PPO correctly found that the applicant may gain unfair advantage through the use of the sign JAVART.

Trade mark law, case XVI GCo 204/13

September 30th, 2013, Tomasz Rychlicki

On Augut 2013, Polish telecom Polkomtel sp. z o.o. started an advertising campaign of its mobile Internet access services. In a short movie, a girl named Basia is starting new life by dumping her boyfriend and moving to a new flat with an Internet access based on LTE technology. She mentions that her boyfriend had Internet access provided by Telekomunikacja Polska S.A. under the brand name Neostrada. She is very happy about the changes. The ad ends with the statement that Internet provided by Plus (brand name of Polkomtel) is faster from Neostrada. This comparison is based on the ranking provided by SpeedTest.pl of July 2013.

On 9 September 2013, Telekomunikacja Polska requested the District Court in Warsaw to issue a preliminary injuntion against Polkomtel, in order to prohibit acts of unfair competition and trade mark infringement of the word trade mark NEOSTRADA R-182762. Telekomunikacja noted that Polkomtel is one its major competitors on the Polish telecommunication market. The Company argued that Polkomtel infringed its trade mark rights by taking unfair advantage of reputation and distinctive character of the NEOSTRADA brand, and the advertising movie was comparative advertising contrary to good practices, and as such, should be deemed as unfair competition.

The District Court in Warsaw in its order of 23 September 2013 case file XVI GCo 204/13 dismissed the request. The Court held that premises to secure the claims are based on substantiation of claims, i.e. on providing prima facie evidence of the infringement and legitimate interest in granting the order. According to the Court, Telekomunikacja did not provide evidence on reputation of its trade mark and Polkomtel did not infringe the right of protection for NEOSTRADA, because this sign was only used to specify the service to which it relates. The word was used as a name for a given service, not as a trade mark. The Court noted that advertising that allows to identify, directly or indirectly, the competitor or products or services offered by the competitor, described as “comparative advertising”, should be deemed the act of unfair competition if it is contrary to good practices. However, the short movie clip published by Polkomtel is not in any way contrary to such practices, because it is not misleading and it does not affect market decisions as to the purchase of goods or services. The Court agreed with the decision of the President of the Office of Competition and Consumer Protection of 6 August 2009 case no. DDK 4/2009, according to which, advertising is deemed as misleading when a consumer gets false idea of ​​the goods or services, and misleading information influence the decision to purchase these products.

See also “Trade mark law, case XXII GWo 68/12“.

Trade mark law, case II GSK 270/12

September 24th, 2013, Tomasz Rychlicki

The Polish company INTERKOBO sp. z o.o., the owner of word trade mark MYBABY R-148924 registered for goods in Class 28 such as games, toys, sporting goods, requested the Polish Patent Office to invalidate in part the right of protection for the word-figurative trade mark MY SWEET BABY R-187751 registered for goods in Classes 12, 20, 25 and 28, and owned by PEXIM Artur Kamiński. INTERKOBO claimed high recognition of the MYBABY reputed trade mark among buyers of children’s toys and a high degree of similarity between the goods. The company noted that since 15 years it is one of the largest importers of toys in Poland. PEXIM argued that its trade mark is registered in class 28 for goods such as children’s toys – dolls, doll beds, cradles for dolls, doll furniture, doll clothing. PEXIM operates since 15 June 2001, and its activity is the manufacture of wicker and wood, which are exported. Wickerworks are made for young children. These are strollers, cribs and miniatures of these products as toys for children. The products are bearing a trade mark and a company name, therefore, the risk of confusion is excluded.

R-187751

The Polish Patent Office invalidated the right of protection in part of goods in Class 28. The PPO ruled that both trade marks are used to designate similar goods. The dominant element in both signs is the word baby, because it is a base or core to the other words, and in particular, their meanings so it shows that the these trade marks have a similar range of meaning, therefore there is a high risk of association by the public between the marks, and the likelihood that the consumer may be confused as to the origin of goods. PEXIM filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 29 September 2011 case file VI SA/Wa 1407/11 dismissed it. The Court ruled that the PPO properly carried out the proceedings and correctly interpreted the law. According to the Court there was homogenity of goods in Class 28, and even the identity of the goods, because the Nice Classification was subject to change over the years, but the changes did not have any historically impact on the signs and the goods offered. The difference of one word that occured in the compared signs was so unimportant that it did not make them different enough to rule out the risk of confusion in the ordinary course of trade. PEXIM filed a cassation complaint, and additionally, a motion to stay the execution of the decision. The Company argued that the contested decision involves very high cost and its implementation would include a very serious consequences for its economic activity, and thus would cause irreparable consequences and expose the company to serious losses.

The Supreme Administrative Court in its order of 27 July 2013 case file II GSK 270/12 dismissed the motion. The SAC ruled that PEXIM, despite its obligation to submit such evidence, has not shown the existence of statutory grounds that would allow to stay the execution of the contested decision. According to the Court, PEXIM only claimed very serious and irreparable consequences and big losses. Meanwhile, while citing in support of the motion specified circumstances, the Company should be able to substantiate their occurrence, thus going beyond the vague and unsubstantiated claims. By pointing to difficulties to reverse the effects of the contested decision, PEXIM did not substantiate the existence of conditions justifying the stay of execution. Therefore, the Court had no chances for the objective assessment. The arguments that the stay of execution of the decision does not endanger the health or human life, and it is not associated with exposure to the national economy from heavy losses, as well as it does not affect the party’s interest, were during the assessment of the motion irrelevant, since it is not a ground for staying the execution that is provided for in the Polish Law on Proceedings Before Administrative Courts. The SAC held that a reference to likely allegations that were raised in the cassation complaint cannot determine the stay, since at this stage it would be pointless and premature. The Court also noted that the order to stay the execution can be amended or repealed at any time if circumstances of the case change. The party seeking for the amendment or repeal of a decision or action, should demonstrate such a change of circumstances that would make its request justifiable and well-founded.

Trade mark law, case II GSK 730/12

September 17th, 2013, Tomasz Rychlicki

On May 2008, the Polish Patent Office granted the right of protection for the word trade mark COOL RIVER R-205208 in Class 3. This sign was applied for by the Polish company Firma Handlowa A & S PARFUME FACTORY Marek Asenkowicz from Katowice.

ZINO DAVIDOFF SA filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. DAVIDOFF argued that COOL RIVER is similar to its trade marks such as DAVIDOFF COOL WATER R-71968, COOL DIVE IR-0850699, Cool Water IR-0615313. All these signs are intended to indicate the same goods as the questioned trade mark. DAVIDOFF also claimed that its trade mark COOL WATER IR-0812386 is reputed one. Moreover, the trade mark COOL RIVER has been applied for in bad faith, because A & S PARFUME FACTORY knew about the existence of earlier marks owned by DAVIDOFF. The sale by A & S of perfumes in almost identical packagings, as packagings used by DAVIDOFF was the irrefutable evidence of the use of reputation of DAVIDOFF’s trade marks and the application of COOL RIVER in bad faith.

IR-0615313

The Adjudicative Board of the Polish Patent Office dismissed the request in its decision of 7 March 2011 case Sp. 483/09. While considering the visual and aural similarity of trade marks Cool Water, Davidoff Cool Water and Davidoff Cool Water Wave in relation to the questioned trade mark COOL RIVER, the PPO noted that all the words used in these trade mark have the origin of the English language. However, regardless of whether they will be pronounced in accordance with the spellings of the Polish language or in English, they are different in the visual and aural aspects due to the different verbal elements – WATER and RIVER. Furthermore, the PPO ruled that the word COOL, being the same element in all signs, is a common and popular word associated with something cold. The word WATER differs from RIVER in the visual aspect, and their pronunciation is different. The PPO also found that there were no circumstances indicating that A & S applied for its trade mark in bad faith. The burden of proving bad faith was on DAVIDOFF. At the same time, the overall assessment of the circumstances surrounding the consciousness of A & S at the date of trade mark application will decide on its bad faith. In the opinion of the PPO, such circumstances did not occur. Evidence such as the flyer entitled “list of alternative scents”, similar perfume packagings used by A & S as well as printouts from the website showing COOL WATER and COOL RIVER perfumes, were not sufficent to prove bad faith. Davidoff filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 January 2012 case file VI SA/Wa 2051/11 dismissed it. The Court agreed with the PPO that the trade marks are not similar. The VAC also held that the understanding of bad faith should be based on the provisions of the Polish Industrial Property Law. Bad faith occurs if someone applies for the trade mark in order to block other application or in order to block the use of the sign by other entity who uses this trade mark in the market or to take over the company’s market position. Bad faith also exists when someone is filing for a trade mark for speculative purposes, and there was no intent to use the applied sign, and in order to get benefits from the entity that owns such trade mark. Bad faith trade mark application happens when the applicant without due care or being aware, applies for a sign in violation of the rights of another person, or when the applied trade mark is contrary to morality or fair trade practices.

The Supreme Administrative Court in its judgment of 3 September 2013 case file II GSK 730/12 dismissed the cassation complaint filed by ZINO DAVIDOFF SA.

Trade mark law, case II GSK 912/12

September 13th, 2013, Tomasz Rychlicki

Zino Davidoff SA filed a notice of opposition to the decision of the Polish Patent Office on the grant of the right of protection for the word trade mark SILVER SHOW R-199238 applied for by Firma Handlowa A&S PARFUME FACTORY Marek Asenkowicz and registered for goods in Class 3 such as perfumery. Zino Davidoff SA argued that the trade mark in question is similar to its series of International registrations such as SILVER-SHADOW IR-0660174, SILVER SHADOW IR-0853401 and SILVER SHADOW IR-0879527. The compared signs are similar in verbal, aural and semantic aspects.

The PPO found that the compared signs are used to designate the goods of the same type, i.e. perfumes and various cosmetics, however the similarity of goods was not disputed by the parties. The PPO decided that there are no similarities between trade marks that would justify the risk of misleading the public as to the origin of goods. The PPO ruled that a leaflet called “alternative scents” and the fact that perfume packaging produced by A&S PARFUME FACTORY were alike to the other well-known brands, were not sufficient evidence to decide on bad faith application. Zino Davidoff SA filed a complaint against this decision. The Company noted inter alia that the PPO wrongly justified its decision by citing a different trade mark owned by Firma Handlowa A&S PARFUME FACTORY Marek Asenkowicz.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 January 2012 case file VI SA/Wa 1850/11 dismissed the complaint. The VAC fully agreed with the PPO’s findings. The Court acknowledged that the questioned decision included mistakes with regard to trade marks and their registration numbers which could point to automatic preparation of the decision’s text, however, such errors had no significant impact on the outcome of the case. Zino Davidoff SA filed a cassation complaint.

The Supreme Administrative Court in its judgment of 3 September 2013 case file II GSK 912/12 dismissed it.

Trade mark law, case XXII GWwp 19/10

September 4th, 2013, Tomasz Rychlicki

ZIMBO Fleisch- und Wurstwaren GmbH & Co. KG sued Wanda Szczupak for the infringement of Community Designs nos. 000729694-0001, 000729694-0002, 000729694-0008 and 000729694-0009, and the CTM ZIMBO no. 006462592. ZIMBO argued that Mrs. Szczupak distributes her products in packagings similar to ZIMBO’s. This similarity is reflected in the choice of colors, arrangement of individual elements of the package, with the dominant red color in the upper part in the white frame surrounding the window showing the product, with figurative floral patterns in green. ZIMBO argued that such packaging did not create a different overall impression on the informed user, and the identity of the goods and the similarity of Viando and ZIMBO trade marks create the likelihood of confusion as to the origin of the products offered by the parties. ZIMBO provided some evidence on consumer confusion. Mrs. Szczupak requested dismissal of the action and reimbursement of costs of legal representation. She alleged lack of standing, and explained that on 31 VII 2010, she sold the entire enterprise to the company Zakłady Mięsne “VIANDO”, all together with the right of protection for a trade mark Viando R-188683 that was granted with priority of 8 April 2004.

R-188683

The Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 4 April 2011 case file XXII GWwp 19/10 dismissed the complaint. The Court agreed with Mrs. Szczupak and ruled that the word-figurative trade marks are not identical or even similar in the visual, phonetic and conceptual aspects. Moreover, VIANDO’s packaging and CDRs nos. 000729694-0008 and 000729694-0009 fundamentally differ in number of elements, and they produce on the informed user (consumer of meats, employee of shops with meat products) different overall impression.

Trade mark law, case II GSK 623/12

August 25th, 2013, Tomasz Rychlicki

On February 2009, the Polish company MIS S.A. applied to the Polish Patent Office for the right of protection for the word-figurative trade mark mis Polecany Lider Innowacyjności Z-351511 for goods in Class 9. The PPO refused, becuase it found similarity with the CTM MIS no. 002167674, registered with the earlier priority for goods in Class 9 and 42 and owned by MIS GmbH. MIS S.A. requested for the re-examination of the matter. The Company argued that the abbreviation MIS stands for management information systems and it lacks distinctiveness, because this term is functioning for many years in the textbooks of economics, management and information technology. The company indicated also that the proprietor of the earlier Community trade mark does not use it in business and is not interested in renewal of the protection of its trade mark, because, for several years, the successor of the German company did not file a formal request to transfer the exclusive rights to the new owner. The PPO refused to grant the right of protection, and MIS S.A. filed a complaint against this decision.

Z-351511

The Voivodeship Administrative Court in its judgment of 29 september 2011 case file VI SA/Wa 1257/11 dismissed it. The Court agreed that there exists similarity of signs and goods and services. Moreover, the Court stated that along with granting the right of protection for a trade mark, the exclusive subjective right is also created, this right is effective erga omnes – against all. So it’s important to separate ranges indicated in exclusive spheres of rights, and strive to avoid a situation where this could lead to overlapping powers. The property right to the trade mark is a transferable right, therefore, the sphere of exclusivity incorporated in the sign cannot be related to the business profile of the entrepreneur, because it involves the variability of the indicated areas of exclusivity and it is impossible to determine it in the course of trade, as well as in the examination proceedings conducted before the Polish Patent Office.

The Supreme Administrative Court in its judgment of 13 August 2013 case file II GSK 623/12 dismissed the cassation complaint filed by MIS S.A.

Trade mark law, case II GSK 2323/11

July 30th, 2013, Tomasz Rychlicki

CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER ROSS R-190192 registered for Firma Handlowa A & S PARFUME FACTORY Marek Asenkowicz, for goods in Class 03 such as perfumes products, toilet water, lavender water, colognes, deodorants for personal use. CARTIER claimed that the contested registration infringes on its company name and the word-figurative trade mark CARTIER R-59579. CHATIER ROSS is detrimental to the reputation of CARTIER’s signs and leads to a weakening of their attractiveness and may cause the loss of trust among buyers of CARTIER’s products.

R-59579

A & S argued that trade marks in this case are not similar both visually and semantically, because the word “chatier” in French means “smooth/polished” and the word “Cartier” indicates the manufacturer. The Polish company cited the judgment of the Supreme Administrative Court of 22 October 2004 case file GSK 811/04 concerning the similarity of the trade marks WELT and WEST IR-621660. A & S also noted that the documents submitted by CARTIER do not prove the reputation of the sign “Cartier”, and pointed to the differences in price of goods bearing both trade marks.

The Polish Patent Office found similarity both of goods and signs, and invalidated the contested registration. While analyzing the evidence on the reputation of the sign “Cartier”, the PPO took into account press articles on the position of the brand in the Polish market and the perception of the consumers. It was irrelevant that the parties use their trade marks to designate goods that differ significantly in price. The PPO ruled that the price of such goods may vary depending on the business strategy of the owner. A & S filed a complaint against such decision. It was dismissed by the Voivodeship Administrative Court in its judgment of 6 July 2011 case file VI SA/Wa 867/11. A & S filed a cassation complaint, but the Supreme Administrative Court in its judgment of 7 March 2013 case file II GSK 2323/11 dismissed it.

CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER COOL MEN R-199458, and the PPO followed the request. A & S complaint was dismissed by the Voivodeship Administrative Court in its judgment of 17 October 2011 case file VI SA/Wa 866/11, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 191/12 dismissed the cassation. The same outcome was in case of the invalidation of the right of protection of the word trade mark CHATIER PURL R-199457 that was owned by the A & S. The Voivodeship Administrative Court in its judgment of 6 September 2011 case file VI SA/Wa 865/11 dismissed the complaint against the decision of the PPO, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 97/12 dismissed the cassation.

Trade mark law, case II GSK 544/12

July 29th, 2013, Tomasz Rychlicki

On December 2010, the Polish Patent Office refused to grant the righ of protection for the word-figurative trade mark Geo Globe Polska Z-359999 applied for the Polish company GEO GLOBE POLSKA sp. z o.o. sp. k.a. The PPO decided that according to the provisions of Article 131(2)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, it is not allowed to grant the right of protection for signs which include the name or abbreviation of the Republic of Poland, if the applicant has not shown entitlement, in particular the permission of the competent authority of the State, to use the trade mark with such element.

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,

The company argued that the name “Polska” is not mentioned among the above conditions, and that Geo Globe Polska has an established position in international business. The company argued that it has tried to obtain permission from the competent authority, but it did not succeed, which in its opinion indicates that there is no legal basis to issue the relevant permit. The Chancellery of the Prime Minister and the Office of the President of the Republic of Poland issued statements that the prohibition on use of the name or abbreviation of the Republic of Poland is absolute. Geo Globe Polska filed a complaint against this decision. The company claimed that the PPO should make a literal rather than a broad interpretation of the provisions of IPL. Geo Globe Polska argued that many business entities in Poland are using the term “Polska”.

Z-359999

The Voivodeship Administrative Court in its judgment of 22 November 2011 case file VI SA/Wa 1749/11 dismissed it. The VAC held that it is obvious that the official name “Rzeczpospolita Polska” (Republic of Poland) includs the element “Polska”. Thus, it can be regarded as an abbreviation of the name of the country. The abbreviation “Rzeczposoplita” has constitutional status, i.e. it is included in the Preamble of the Constitution of the Republic of Poland, and its second element, whether in the Polish language or in translation into other languages, is the distinguishing element of the country’s name, and it’s commonly used at international meetings, competitions, including sports events. Moreover, even the Supreme Administrative Court in its judgment of 9 March 2005 case file I GSK 1423/04 published in LEX No. 186863, held that the protection is also afforded for the abbreviations in the form of the ISO 3166 standard for country codes, such as ID or PL. In another judgment of the Voivodeship Administrative Court in Warsaw of 23 March 2007 case file VI SA/Wa 2184/06, the Court held that the name “Poland” is not sufficiently distinctive. The word “Poland” is the English name of the Republic of Poland, and the Polish Patent Office rightly pointed in this case, that even for people who do not know the Polish language, the term “Poland” will always be associated with the country, and not to a specific entrepreneur. The Court also noted that the provisions of Article 6 ter point 1a) of the Paris Convention and Article 7(1)(h) and (i) of the Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark should be taken into account. The Court ruled that the protection of symbols under Article 6ter of the Paris Convention is absolute and applies to all goods and services. It concerns the symbols of particular public interest.

The Supreme Administrative Court in its judgment of 23 July 2013 case file II GSK 544/12 dismissed the cassation complaint.

Trade mark law, case XXII GWo 68/12

July 26th, 2013, Tomasz Rychlicki

The Greek company I. & K. Nikolaidis Anonymi Viomichaniki Kai Emporiki Etaireia Oikiakou Kai Epaggelmatikou Exoplismou – Geniko Emporio I.D. Sourcing A.E. requested the Polish Court for the Community Trade Marks and Community Designs to order Media Service Zawada to disclose information on producers, manufacturers, distributors and suppliers of quantities of produced and sold goods and products bearing the signs BEN 10. The Greek company is the owner of the CTM FAN BAG No. 8487911. The Polish company noted it does not use the sign in question as a trade mark but in the descriptive function, to indicate the type of goods – bags of toys related to the Ben 10 TV series, designed for fans of the series.

The Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of in its order of 3 December 2012 case file XXII GWo 68/12 dismissed the request. The Court ruled that while alleging that the defendant infringed on its CTM, the Plaintiff should indicate what type of infringement, as defined in Article 9(1) of the CTMR, has occurred in its case, and should also prove all the conditions which must be met to justify opposition to the Defendant’s use of the CTM FAN BAG No. 8487911. Usually, the Plaintiff should also indicate how the allegedly infringing actions of the defendant affect the functions performed by the trade mark. In any event, it could not be considered as sufficient evidence to only refer to the certificate of registration and description of the defendant’s actions, as did the Greek company in this case. It was also necessary to present the claims of identity/similarity between the CTM and the questioned sign and the identity/similarity of the goods or services of either party, the strength of the trade mark, its reputation, and if there is a risk of consumer confusion, and also to provide proper evidence. The Court is allowed to apply provisional and protective measures based on the provisions of the CTMR and the Polish Industrial Property Law. The Court noted that the right to obtain information (informational claim), does not in fact secure the claim. It has its own nature, which is similar to the informational claim referred to in Polish copyright law. At this stage of the proceedings the owner/requesting party can not make claims which occur in the future, possibly before the courts. These may be claims defined in the CTMR and Polish Industrial Property Law. The order to grant access to such information is intended to determine the responsibilities of a particular entity for breaching industrial property rights. Such information will allow the owner to make a decision how to sue (how to develop a lawsuit and actions) the infringer with the use of relevant and proper claims. Filing a request with an informational claim, the owner/holder must, however, explain what is the infringing act or acts and highly substantiate them but most of all, it has to indicate the claims to which the necessary information is needed, and the person to whom such claims will be directed in a future suit. Quite different information may be used in constructing claims such as interdiction, removal the effects of the infringement, payment of damages, recovery of unlawfully obtained profits or publication of the judgment, that were used against the importer, exporter, manufacturer, the person placing the product on the market, or advertiser. The main condition in order to take account of the informational claim is to establish high probability of the infringement (prima facie evidence of the infringement). Such wording was used by the Polish legislator while implementing Directive 2004/48/EC. As the Court noted it is a very original and new wording. The legislator did not refer to concepts already existing in the Polish law based on proving and making probable of facts, but required a “high degree of probability”. The Court recognized such situation as something being between “the probable” and “the proved fact of the infringement”, however, its evaluation is always left in each case to the Court hearing a request for disclosure of information. In addition, deciding on such request, the Court must also ensure the protection of business/trade secrets. The Greek company while alleging infringement of its CTM, should, inter alia, to show that Media Service Zawada was using this sign for goods which were identical or similar to these protected. However, the Company included in the request a very general statement “goods infringing the Applicant’s right” which did not allow the Court for assessment of the validity of alleged infringement. The Court held that the request did not contain evidence, and even claims of the infringement of the CTM FAN BAG No. 8487911, that could be considered as a higly probable evidence that could establish a trade mark infringement case (prima facie evidence).

Trade mark law, case II GSK 484/12

July 14th, 2013, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for word trade mark Orlen R-192731 owned by the company ORLEN Spółka z o.o. that was registered for goods in Class 9 and services in Class 42 with the priority of 2002. The request was filed by the big Polish oil company PKN ORLEN S.A. which argued that the questioned sign is similar to its reputed trade mark ORLEN R-125559 that was registered with the priority of 1999. Orlen sp. z o.o. claimed that its company had been registered and has been operating since 1992 under the name “Orlen”, and Orlen S.A. adopted and appropriated that name in 2000. Orlen S.A. called Orlen sp. z o.o. to discontinue use of that name due to getting the right of protection for the earlier trade mark ORLEN. After an exchange of correspondence between the parties, there was no consensus due to divergent expectations, in particular with regard to financial issues. Orlen S.A. proved that there were contacts and negotiations between the parties, subject to the cease of use of the mark ORLEN and argued that the trade mark application was mercantile in nature, becasue the applicant seek only commercial interest and wanted to sell this trade mark. Orlen S.A. submitted copies of correspondence between the parties and photocopies of sale offers. ORLEN Spółka z o.o. filed a complaint against this decision and pointed out that it has offered to sell the company as a whole rather than the trade mark itself.

R-167806

The Voivodeship Administrative Court in its judgment of 24 October 2011 case file VI SA/Wa 1376/11 dismissed the complaint and ruled that an entrepreneur performing its business activities must be guided by the degree of care that is expected from more than the average person in order to predict the consequences of his or her actions and omissions. The content of the right to the company name within the meaning of the Polish Civil Code is not in fact an absolute and unrestricted right that allows to apply on its behalf for a trade mark that is convergent with this company name, regardless of the rights of third parties. Therefore, the person who uses a given sign and does not register it on his or her own behalf as a trade mark, acts at own risk. An entrepreneur who does not seek to acquire protection for its trade mark cannot rely on the earlier right to its company name, when the other party has obtained a right to a sign identical to the name of the business with an earlier priority and through significant investments earned its reputation. In such a situation, an identical trade mark application made by the entrepreneur who has the right to the company after many years from the commencement of his business, when the other party has made a substantial investment and broad actions leading to the reputation of its trade mark, should be regarded as taking unfair advantage of the reputation of the earlier sign.

The Supreme Administrative Court in its judgment of 26 June 2013 case file II GSK 484/12 dismissed the cassation complaint.

Trade mark law, case I ACa 1268/12

July 4th, 2013, Tomasz Rychlicki

Wytwórcza Spółdzielnia Pracy SPOŁEM (WSP SPOŁEM) from Kielce (the capital city of the Świętokrzyskie Voivodeship) sued ROLESKI Sp. J. for the infringement of word and figurative trade marks R-197616, R-170401, R-123588 and R-193780 and unfair competition torts/delicts. Both Polish companies produce different mayonnaise products that are sold in jars of a similar capacity. WSM Społem is a manufacturer of “Majonez KIELECKI”. In 2008, ROLESKI produced mayonnaise in a package bearing the designation “Świętokrzyski”. The label of this package was modified twice, by removing the word “Świętokrzyski” and by replacing it, during courts’ proceedings, by the word “Regionalny”. WSP SPOŁEM asked the District Court in Kraków to secure the claims and to issue preliminary injunction in order to prohibit ROLESKI, until the final decision is rendered, the sale of mayonnaise in a jar with a label containing a yellow background, a centered white box in the shape of an ellipse with a green border, and a green jar lid, and a round yellow sticker connected with jar’s side, and to seize and retain, until the final decision is issued, of all products held by the defendant in the form of mayonnaise packages with labels containing centered yellow background, a centered white or yellow field in a shape similar to an ellipse, framed or underlined by a green or red line, with a green round jar lids and a yellow label (band) connected to jar’s side, and also containing any of the elements described above.

R-123588

ROLESKI requested the Court to dismiss the suit. The Company argued that it does not counterfeit products of WSP SPOŁEM as it manufactures own products bearing reputable trade mark, which in consequence, eliminates not only identity, but also the similarity of products. ROLESKI noted that if the two parties compete under their own brands, there is no harm to the reputation and distinctive character of their trade marks. According to ROLESKI, WSM Społem mistaken reputation of the registered trade mark with the concept of the reputation of a product. As a result, it does not prove the reputation of the figurative mark R-197616, but generally a particular product “Majonez KIELECKI”. WSM by designating its product with a word “Majonez KIELECKI” indicates only its generic name and determine the place of origin, and therefore such trade mark is devoid of any distinctive character, as opposed to the trade mark used by ROLESKI, that is a distinctive sign.

R-193780

The District Court in Kraków in its judgment of 23 May 2012 case file IX GC 86/10 found that graphics of mayonnaise packages produced and marketed by ROLESKI were modeled on the graphics of mayonnaise package produced and marketed by WSP SPOŁEM. The Court noted that similarities outweighed the differences. The Court made findings of facts on the basis of documents submitted by the parties, as well as the testimony of witnesses and the opinion of an expert witness, except for the part where the expert speaks about the intentions of the designer’s of ROLESKI’s trade marks. The Court asked the expert on the likeness of packages containing the elements of trade marks and the impact of possible similarity on the likelihood of consumer confusion. ROLESKI filed an appeal complaint. The Court also found that ROLESKI used the word “Świętokrzyski”, but the office of the company was located in another voivodeship (Małopolska Voivodeship, in the Tarnów community), which was deemed as an act of unfair competition.

R-197616

The Appeallate Court in Kraków in its judgment of 15 January 2013 case file I ACa 1268/12 dismissed it and ruled that the District Court has made ​​the appropriate findings. The Court noted that the evidence and testimony of expert witness allowed for a clear and comprehensive answer to the question of similarity of the goods, understood as a whole, including packaging, manufactured and marketed by the parties, taking into account changes made by ROLESKI in the appearance of mayonnaise packaging produced by the Company from Tarnów. The Court confirmed that by the use of the word “Świętokrzyski” together other elements similar to those attributed to WSM Społem, ROLESKI has exploited a set of associations created by WSM Społem for the product, which is mayonnaise with a specific package. The use of the additional word “Świętokrzyski” perpetuated these associations and allowed the Court to treat ROLESKI’s action as an act of unfair competition. ROLESKI appealed directly to the reputation of the product of WSM Społem by invoking the name of the capital of Świętokrzyskie region. The Court acknowledged similarity of the vast of words and figurative elements of packaging. All the elements visible on the packaging of both parties, although they include other wordings by the use of the same color and compositional arrangement lead to customer confusion as to the origin of the goods, and it also constitutes an act of unfair competition.

Trade mark law, case I ACa 1402/12

June 28th, 2013, Tomasz Rychlicki

The Polish company SOBIK, a producer of butter, sued Okręgowa Spółdzielnia Mleczarska in Radomsk (OSM) for trade mark infringement of the word-figurative trade mark NATURALNY PRODUKT POLSKI, MASŁO EXSTRA OSEŁKA GÓRSKA z ekologicznie czystych terenów R-165550 and the word-figurative trade mark Naturalny polski produkt z ekologicznie czystych terenów MASŁO EKSTRA OSEŁKA GÓRSKA Naturalny polski produkt z ekologicznie czystych terenów SOBIK DOBRE BO POLSKIE Wyróżnione nagrodą konsumenta LAUR KONSUMENTA 2005 Wyróżnione Srebrnym Laurem Konsumenta R-203677 and three other trade marks.

R-165550

SOBIK argued that OSM in Radoms used similar product packages for butter, in particular these with words “Masło Extra” (extra butter) and “Osełka” (butter pat) written in red font on white or creamy background, and with a layout of words and figurative elements that were similar to these used in the registered trade marks.

R-203677

The District Court in Łódź in its judgment of 30 August 2012 case file X GC 391/10 held that SOBIK failed to show the existence of three products on the market and the competitive behavior of the defendant in respect of infringements of trade marks R-200466, R-200467 and R-195683. However, the Court found the infringement of other two signs and ruled that consumers examine packaging of products, such as butter, from a distance. The Court noted that everyday-use products (FMCG) are displayed in stores next to each other, which may lead to likelihood of confusion, because consumers do not attach so much attention in their selection. The Court also found that OSM was involved in acts of unfair competition by imitating products of SOBIK. OSM filed an appeal complaint.

The Appeallate Court in Łódź in its judgment of 29 April 2013 case file I ACa 1402/12 dismissed it and ruled that OSM was not prohibited from the use of words such as “Masło Extra” or “Osełka”, but the company cannot use similar graphic design for these words on its products that could lead to consumers’ confusion.

Trade mark law, case II GSK 487/12

June 27th, 2013, Tomasz Rychlicki

On May 2006, the Polish Patent Office granted the joint right of protection for the word-figurative trade mark SILMENT R-175055 for three Polish entrepreneurs – Stanisław Wilk, Jan Kosmala and Marek Siemiński. Mr Wilk requested the PPO for a change in the trade mark register. According to the donation agreement of January 2010, he has transferred to his son 1.65% of 33% of his share in the right to the trade mark. On June 2010, the PPO entered the name of his son and deleted Stanisław Wilk, however, after the request for re-examination, the PPO made another changes in the column A of the trade mark register, and entered both father and son as co-owners. Mr Kosmala filed a comaplaint against this decision. He argued that the supplied evidence did not allow for making such amendments. Mr Kosmala did not agree that a part of 33% share could be transferred to another person, because according the agreement of 2004 on the joint ownership, that was signed between Kosmala, Siemiński and Wilk senior, any joint owner could make a donation of the joint right to the right of protection for a trade mark SILMENT R-175055 only to the spouse and descendants of the first group of inheritance.

R-175055

The Voivideship Administrative Court in Warsaw in its judgment of 25 October 2011 case file VI SA/Wa 1409/11 noted that between co-owners to the trade mark SILMENT arose a dispute over the interpretation of the agreement. The Court ruled that, in principle, the right of protection for a trademark may be assigned or be subject to succession. The transfer of the right of protection may be effected only with the consent of the parties who enjoy that right. The agreement of assignment of a share in the joint right of protection should be only valid subject to the consent given by all of the joint owners. When examining the request for the change in the trade mark register, the PPO should investigate whether the submitted documents, supposed to provide grounds for taking a decision on entry in a register, are in accordance with this Polish Industrial Property Law and satisfy the effective provisions as to form. The entries should not be binding on an authority whose responsibilities, under the provisions of law, include deciding on a document founding the decision on entry in a register or in a case, the outcome of which may affect a decision of the Polish Patent Office on entry in the register. The “registry-entry” proceedings are designed to adjust the content of an entry with the current legal status, and a decision on the entry into the trade mark register has only a declaratory nature and it not a source of trade mark rights. Therefore, the cognition of the Polish Patent Office in matters of entries in the registry, is strictly defined. This means that while investigating the request for a change, the PPO cannot exceed those limits. As a result, the PPO cannot investigate the regularity of both the preparation of the documents submitted as a basis for entry in the registry, as well as make their interpretation. As there is dispute between the parties over the interpretation of the agreement, the PPO cannot agree to the interpretation of one of the parties. These doubts have to be resolved by a civil court. And if such dispute has not been initiated by a party, the PPO should stay proceedings and call the party to apply to the competent court, within the prescribed time, to provide a preliminary decision on the issue which is a condition of the settlement in the main case. Therefore,the Court annulled the contested decision, ruled it unenforceable, and ordered the PPO to consider the Court’s arguments during re-examination of the case.

The Supreme Administrative Court in its judgment of 20 June 2013 case file II GSK 487/12 dismissed the cassation complaint. The SAC held that the controversy concerning the effects of the donation agreement in the light of the content of the co-ownership of a trade mark rights, has to be resolved by a proper civil court.

Trade mark law, case VI SA/Wa 2349/12

June 21st, 2013, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw case file VI SA/Wa 2349/12 dismissed the complaint filed by the International Olympic Committee (IOC) against the decision of the Polish Patent Office that refused to invalidate the word-figurative trade mark Olimpiada Przedsiębiorczości R-220562 owned by Fundacja Promocji i Akredytacji Kierunków Ekonomicznych, and ruled that this sign not similar to the Olympics, Olympic and Olimpiad trade marks.

R-220562

The Court agreed with the PPO that sounding of the sign in question is sufficiently differentiated primarily due to the fact that the mark is composed of two words.