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Archive for: bad faith

Trade mark law, case II GSK 344/09

April 20th, 2010, Tomasz Rychlicki

This is the continuation of the history described in the post entitled “Trade mark law, case VI SA/Wa 1388/07“.

The Polish Patent Office (PPO) and the Voivodeship Administrative Court (VAC) ruled that EAU DE TOKYO trade mark is totally dissimilar to KENZO or to L’eau par Kenzo trade marks. The mere fact of the use of the word eau did not predict similarity of questioned signs, because the word as part of the expression of eau de toilette, in relation to cosmetics does not have any distinctive character. The PPO and the VAC did not agree with arguments that MGT Parfum Création wanted to use the reputation that was understood as the good name of KENZO.

According to the PPO and the VAC, the use of packaging that is confusingly similar to the packaging used by KENZO could only give rise to claims of delict of unfair competition which is decided in the civil proceedings. The very fact of any dishonest conduct of the holder of the disputed registration cannot be interpreted that the trade mark application has been made in bad faith. Even if the court agreed that events which took place in 2006, i.e. MGT actions based on producing EAU DE TOKYO packaging that looked alike L’eau par Kenzo perfumes, and advertising of its products with “the type of Kenzo perfume” slogan, could raise doubts about compliance of such actions with the rules of fair competition, but these were not sufficient facts to consider that in 2000, MGT had the intention to act dishonestly – in bad faith.

The Supreme Administrative Court (SAC) in a judgment of 26 January 2010,case file II GSK 344/09, ruled that the PPO has properly established and the VAC correctly agreed to facts, that at the time of application for the protection right for EAU DE TOKYO R-153843 trade mark, the bad faith could not be attributed to MGT Parfum Création.

Trade mark law, case VI SA/Wa 1988/09

April 15th, 2010, Tomasz Rychlicki

Kraft Foods Polska Spółka Akcyjna from Warsaw, the owner of PRINCE POLO R-148617 trade mark gave a reasoned notice of opposition to a final decision of the Patent Office on the grant of a a right of protection to MARCO POLO R-174796 trade mark that was applied for by Zakłady Przemysłu Cukierniczego MIESZKO S.A. for goods in class 30.

Kraft Foods claimed that there is a risk of confusion between these trade marks, which is the result of the similarity of the compared signs and the identity of the goods. Kraft also submitted evidence to prove the reputation of PRINCE POLO trade mark. Mieszko argued that the signs are dissimilar because the graphic/figurative element of these marks is essential, and verbal elements are blurred or faint and even minor. Mieszko also found arguments of POLO PRINCE reputation very questionable, because even Kraft indicated that the goods for which its trade marks are registered marks are cheap and directed for the mass consumer.

The Polish Patent Office (PPO) In a decision of 23 April 2009, ruled that the same element POLO does not determine the similarity between both signs, because the differences occurring in the conceptual aspect rule out the risk of consumer confusion as to the origin of goods. The PPO held that contrary to the Kraft’s arguments, Marco Polo sign will primarily be associated by purchasers of goods with a famous explorer, because it is simply his name. However, PRINCE POLO sign, regardless of how it can be translated into Polish, is not used to identify a specific person and it is not a proper name. Despite the recognition of Kraft’s trade marks on the Polish market, the average consumer will associate MARCO POLO in the first place with a person of a traveler rather than as Kraft claimed with its PRINCE POLO trade marks. Therefore, the PPO rejected the notice of opposition. Kraft filed a complaint to the administrative court.

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 11 February 2010, case file VI SA/Wa 1988/09, agreed with the PPO’s assessment of the similarity and ruled that since the signs are not similar then the discussion about using someone else’s reputation is not justified. Dissimilar signs cannot cause association in consumer’s mind, so there can be no question of imitation, and conscious deriving of benefits from someone else’s reputation.

Kraft filed a cassation complaint to the Supreme Administrative Court. See “Trade mark law, case II GSK 746/10“.

Trade mark law, case II GSK 387/09

March 30th, 2010, Tomasz Rychlicki

Tianjin Cosmetics Scientific – Technical Research Institute Co., Ltd from China filed a request for invalidation of PULANNA R-76294 and PULANNA R-76424 trade marks. The company from China claimed that the person who applied for the protection of these two trade mark was acting as a Polish agent of Tianjin Cosmetics Scientific and he has concealed the fact of both trade mark applications and subsequent registrations.

The Supreme Administrative Court in a judgment of 17 February 2010, case file II GSK 387/09 ruled that to the extent as follows from an international agreement, where a trademark has been applied for protection by and on behalf of, or the right of protection has been granted for, an agent or a representative of the person enjoying the exclusive right to use that trademark in another country, that person may, if the agent or representative acted without that person’s consent, demand that the protection granting proceeding be discontinued or the right of protection revoked. He may also demand that the right of protection be granted on his behalf, or the right already granted transferred to him.

The right may not be demanded to be revoked or transferred, where the entitled person has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use.

See also “Trade mark law, case II GSK 950/08“.

Trade mark law, case II GSK 1111/08

January 13th, 2010, Tomasz Rychlicki

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

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

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

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

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

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

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

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

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

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

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

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

The SAC held that provisions of the First Directive 89/104/EEC of 21 December 1988 do not preclude the possibility of granting the protection to unregistered reputed trade marks under the national law. Just to keep it in order, it is worth adding, that the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, provides in article 132(2)(iii)

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

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

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

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

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

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

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

Trade mark law, case VI SA/Wa 274/09

December 3rd, 2009, Tomasz Rychlicki

In a decision of 20 June 2008, the Polish Patent Office (PPO) invalidated the right of protection for “Logos Travel Mark Śliwka” R-169277 trade mark owned by LOGOS TRAVEL MAREK ŚLIWKA SPÓŁKA JAWNA Magdalena Śliwka, Marek Śliwka. A request for invalidation of the right of protection was filed by Biuro Turystyki Związku Nauczycielstwa Polskiego LOGOSTOUR Sp. z o.o. from Warszawa – the holder of “LogosTour LT” R-74232 trade mark that was registered with priority from 15 July 1991. LOGOSTOUR company claimed that Mr Marek Śliwka cooperated with it since 1994 as a local representative and under a contract, which came into force on 1 January 1995 and the additional agreement of 9 April 2002 he was allowed to use the “LogosTour LT” trade mark. The PPO found that “Logos Travel Mark Śliwka” was applied in bad faith. Mr Śliwka filed a complaint to the Voivodeiship Administrative Court in Warsaw (VAC) arguing that there was no bad faith on his side and there is no likelihood of confusion with regard to disputed trade marks.

The VAC in a judgment of 23 June 2009, case file VI SA/Wa 274/09, ruled that the application for the right of protection for a trade mark is made in bad faith, despite the knowledge or ignorance, resulting from an absence of diligence, about the existence of another’s right or interest that is worth of protection, which can be threatened, and with the intention of harming these interests. The overall assessment of the likelihood of confusion as it concerns the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, taking into account, in particular, their distinctive and dominant components.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

Trade mark law, case II GSK 1011/09

November 25th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 18 June 2009 case file VI SA/Wa 1731/08 ruled that while examining the violations of the rules of social coexistence, the Polish Patent Office must take into account also the subjective elements, which means that on existence of the conditions referred to in Article 8(1) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, may decide certain actions of the trade mark applicant, especially when these actions are characterized by offending behavior.

Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;

This judgment concerned the invalidation proceedings of ecard R-150521 trade mark owned by Firstcove Technology Limited from Dublin. The VAC held also the right to company’s name (firm) is created at the time, when the order of entry into the commercial register is issued. However, the fact that information on the formation of a specific company was made publicly available, the issuance of which is required by law, should also be taken into account. This argument must be considered by the PPO in the assessment of allegations of violation of Article 8(2) of the TMA. The cassation complaint was dismissed by the Supreme Administrative Court in its judgment of 24 November 2010 case file II GSK 1011/09.

Trade mark law, case VI SA/Wa 897/09

October 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 October 2009 VI SA/Wa 897/09 held that the company name (firm) serves as the identification and prominence of the entrepreneur in the legal and economic transactions. It is also a carrier of certain information about the characteristics and qualities of business conducted by such entrepreneur. An unauthorized interference with the function of a company name infringes on the right to the name. The company name, also of the civil partnership, is a personal interests/asset of the company and relates to its identity when it individualize such entrepreneur. The firm/company name is subject to protection of personal rights/intrests under Articles 23 and 24 of the Civil Code, in conjunction with Article 43 ^{10 of the Civil Code.}

R-143502

The Court ruled that the company name (firm) is the absolute personal right, effective erga omnes, and enjoyed by everyone including businesses and individuals that do business in the form of civil partnership. The right to a company name is formed with the entry of the entrepreneur in the business register, and in any event, when the company used for the first time in trade. Entrepreneurs may claim the right to the company name (the firm) after they have been registered in the Register of Entrepreneurs in the National Court Register or in the Economic Activity Records. The disclosure of trade name/company’s name is provided in the registry (National Court Register – Polish public register maintained by the selected regional courts and the Ministry of Justice which includes the register of enterprises). It has a declaratory nature. The Economic Activity Records are maintained by the municipality of the place of residence of the entrepreneur.

The Supreme Administrative Court in its judgment of 15 January 2008 case file II GSK 298/07 held that the right of the company name is infringed if the registration of a trade mark conflicts and interferes with the exercise of the right to company name. See “Trade mark law, II GSK 298/07“. This conflict is based on misleading as to the identity of entities (acting under the company name and using the trade mark) and therefore it may jeopardize the company name (firm). Such conclusions were reached by the Supreme Administrative Court in its judgment of 26 April 2006 case file II GSK 31/06.

This case concerned the invalidation proceedings of word-figurative trade mark PIOR R-143502 owned by Przedsiębiorstwo Usługowo-Handlowo-Reklamowe PRIOR, Rostkowska Janina, Rostkowski Jan, Kuc Małgorzata from Chorzów.

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

October 13th, 2009, Tomasz Rychlicki

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

The ITC claimed it has been active in the cosmetics industry fo the long time and the most popular goods are these marked with the Xavier Laurent brand. The company had a national distributor of its products in Poland which on March 1994 applied to the Polish Patent Office for the trade mark registration of XAVIER LAURENT sign and later on it has assigned the right of protection for XAVIER LAURENT R-92393 to HOUSE. The ITC based its request on article 8(1) and (2) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with subsequent amendments.

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

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

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

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

August 18th, 2009, Tomasz Rychlicki

On 23 September 2005, the Polish Patent Office granted the right of protection for the word trade mark COROTAPE R-168086 for goods such as tape, foil and anti-corrosion membranes in class 2 and goods in class 16. The right was granted to the Polish company CB Spółka z o.o. from Opole. Coroplast Fritz Müller GmbH & Co.K.G. from Wuppertal, Germany, filed a notice of opposition based on article 246 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments.

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

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

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

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

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

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

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

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

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

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

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

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

Trade mark law, case II GSK 950/08

August 12th, 2009, Tomasz Rychlicki

On 2 September 1998, the Polish Patent Office has granted the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 for the Polish company “SCOTCH & SODA” POLSKA Jadwiga i Piotr Szlegiel Spólka Jawna from Gorzów Wielkopolski for goods in class 25. On 2005, Scotch & Soda B.V. from Netherlands filed a request for invalidation of the right of protection for SCOTCH & SODA R-100588 trade mark based on article 8(i) and 8(ii) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No. 5, item 15, with later amendments:

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

The request was also based on provisions of article 6septies of the Paris Convention for the Protection of Industrial Property. The S&S company argued that for over twenty years it exports clothing goods marked with the Scotch & Soda trade mark to many countries in the world through local distributors. One of them was a Polish businessman, who in 1994 became the sole importer and distributor of Scotch & Soda products in Poland. According to S&S his Polish partner has abused its trust by obtaining the trade mark protection for Scotch & Soda trade mark for himself and in this way blocking access to the Polish market for S&S. In 2002, the S&S company has signed with Piotr Szlegiel a document called “cession of rights from the registration of the mark.” However, at the date of the signature of this document, the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 already belonged to “SCOTCH & SODA” POLSKA. In addition the S&S company received a financial request from the Polish entrepreneur.

“SCOTCH & SODA” POLSKA claimed that it was an equal partner, rather than the official importer and sole distributor of the S&S company’s goods and it was not bound by the agency or representative contracts. The legal predecessor of “SCOTCH & SODA” POLSKA had full autonomy inter alia, he was allowed to apply for the registration of the disputed mark on the territory of the Republic of Polish. This fact was known to S&S. Polish company has claimed that S&S failed to obtain the trade mark protection for SCOTCH & SODA sign based on the international registration under the Madrid Agreement and it did not take any action to change this situation. After the completion of courts’ proceedings the S&S company has offered “SCOTCH & SODA” POLSKA a royalty-free (free of charge) license to use the disputed trade mark for shoes throughout Europe in return for the transfer of the right of protection. These negotiations have not yielded results.

“SCOTCH & SODA” POLSKA was astonished by the fact that the S&S company “challenged” the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 for the first time after it has received a cease and desist letter (a request for voluntary fulfilment of plaintiff’s demand is a prerequsite to file a complaint in a civil suit against trade mark infringer) on October 2003.

“SCOTCH & SODA” POLSKA requested the Polish Patent Office to dismiss a request for invalidation of the right of protection for SCOTCH & SODA R-100588. The Polish company called the circumstances with regard to litigation that ended in a judgment issued by the Regional Court in Zielona Gora (case act signature V GC 522/03). the Regional Court dmissed a suit brought by S&S company based on article 161 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.

1. To the extent as follows from an international agreement, where a trademark has been applied for protection by and on behalf of, or the right of protection has been granted for, an agent or a representative of the person enjoying the exclusive right to use that trademark in another country, that person may, if the agent or representative acted without that person’s consent, demand that the protection granting proceeding be discontinued or the right of protection revoked. He may also demand that the right of protection be granted on his behalf, or the right already granted transferred to him.

2. The right may not be demanded to be revoked or transferred, where the entitled person referred to in paragraph (1) has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use.

However, the PPO did not agree with “SCOTCH & SODA” POLSKA arguments and it has invalidated of the right of protection for SCOTCH & SODA R-100588 trade mark in its decision of 2007. In the PPO’s assessment the legal predecessor of “SCOTCH & SODA” POLSKA has been acting in bad faith while applied for the protection rights to the disputed sign. According to the Polish case-law and doctrinal opinions that were cited by the PPO, the applicant for trade mark registration is acting in bad faith when he/she knows or should know that such action violates third parties’ rights. Acting in bad faith is also one who is relying on a right or legal relationship and knows that this right or a legal relationship does not exist, or he or she does not know, but the lack of knowledge can not be regarded as the justified circumstances. The PPO has also noted that in the legal commentaries on Polish trade mark law two competing views on bad faith are taken into account. First, bad faith occurs when a person who owns a disputed trade mark registration had to know or should know that the legal conditions to acquire this right were not met. In such case, the owner is always acting in bad faith when a mark has been registered contrary to the applicable provisions of the law or expressly recognized principle of social coexistence (see: article 8(i) of the TMA). By contrast, in the case of trade mark registration that was made despite the existence of an earlier priority right, an owner of such righ can be entitled as acting in good faith only if he or she was deceived (and it can be justified) with regard the extent of protection resulting from the trade mark right with an earlier priority. If the registration has been aquired by a person for a purpose other than to use a trade mark (for example, to force financial concessions from other entrepreneurs, to obtain control over imports, to force reaching of a license agreement) in this case, bad faith is understood as a qualified form of a breach of social coexistence rules. Such opinion was issued by R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 224. However, in turn, dr Elzbieta Wojcieszko-Gluszko thinks that there is no reason to modify the general concept of good and bad faith for the needs of the IPL regulations. According to dr Wojcieszko-Gluszko a valuable guidance for the interpretation with regard to bad/good faith may be a reference to the legal definition of a filing made in bad faith that is provided in the Benelux Trademark Law.

The PPO also cited arguments provided in the judgment of the Supreme Administrative Court of 6 August 2002, case file II SA 3879/01 and interpretation included in the judgment of 17 July 2003, case file II SA 1165/02 that was issued on the basis of article 8(i) of the TMA and in which the Court concluded that the issue of an assessment of the contradiction of a trade mark application with rules of social coexistence does not refer to trade mark only and itself, but also takes into account the contradiction with the principles of actions made by an applicant and their intended effect. In courts’ opinion the extending interpretation of the rules of social coexistence is justified if one notices that this general clause/rule has displaced such clauses and rules as the principles of good manners, fair trading and good faith. The PPO has considered as totally unfounded all arguments that the consent for a trade mark registration belonging to a partner was justified due to a lack of prohibition in the relevant articles of association, or in other agreements concluded between the parties. The concept of an agent or a representative in this case should be interpreted according to the Polish law. Selling products on the Polish market by the involved people was in such a role. “SCOTCH & SODA” POLSKA brought a complaint to the Voivodeship Administrative Court in Warsaw, which, in a jugment of 29 May 2008, case file VI Sa/Wa 402/08 dismissed the complaint. “SCOTCH & SODA” POLSKA brought a cassation complaint to the Supreme Administrative Court in Warsaw. The cassation complaint was dismissed in judgment of 2 July 2009, case file II GSK 950/08.

The SAC emphasized the fact that for the assessment of compliance of a registration of a mark with the principles of social coexistence (as referred to in article 8(i) of the TMA) the most authoritative is the moment of filing an application for trade mark registration of in the Patent Office, which in this case took place in March 1995. It could not be left imperceptible by the Courts that even “SCOTCH & SODA” POLSKA claimed that the disputed mark was not its property at the date of filing for registration in the Patent Office (sic!). Moreover, the legal predecessor of “SCOTCH & SODA” POLSKA did not inform S&S about his registration neither got a permission for such action. If it were otherwise, what is clear, the S&S company would not file for the recognition on the territory of the Republic of Poland of the protection for its international trademark.

As a distributor of the goods of an entrepreneur located abroad who was not leading any commercial activities in its own name on the Polish territory, the legal predecessor of “SCOTCH & SODA” POLSKA probably knew, or in any circumstance must have known that the application in its own name for registration of a trademark belonging to a foreign business violates provisions of article 6 septies of the Paris Convention. But not only. “SCOTCH & SODA” POLSKA predecessor’s behavior violated the rules of social coexistence, within the meaning of article 8(1) of the TMA. His actions in fact were directed at the appropriation of trade mark property rights owned by the S&S company, without obtaining any consent, in order to achieve unjustified benefits. Such behavior clearly violates the principles of social coexistence as it was decided by the Polish Patent Office and the Voivodeship Administrative Court in Warsaw.

Trade mark law, case II GSK 764/08

May 22nd, 2009, Tomasz Rychlicki

In March 2007 the Polish Patent Office issued a decision invalidating the right of protection for the trade mark OFF THE LIP R-153658 owned by Polish company PREMIERE Spólka z o.o. from Chorzów, registered for goods in classes 18 and 25. The request for invalidation was brought before the PPO by German entrepreneur Kurt Wendler-Rothenberger, who owned two German trade mark registrations for OFF THE LIP RN-1120143 and RN-2015151. The request was based on article 8(i) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with later amendments:

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

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

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

Trade mark law, case II GSK 642/08

March 19th, 2009, Tomasz Rychlicki

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

In February 2007, the President of the Executive Board of the Polish Society of Optometry and Optics informed the Polish Patent Office that the word optometrysta is a common profession name, used at least since 1983. In March 2007, the request for invalidation of the trade mark was filed by the President of the Patent Office, based on claims that the registration was granted against Article 7(2) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

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

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

This was in connection with Article 167(2) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments.

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

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

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

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

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

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

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

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

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

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

Trade mark law, case Sp. 451/07

January 22nd, 2009, Tomasz Rychlicki

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

R-173752

Hard Rock Holdings Limited from the UK filed a request for invalidation of the right of protection based on provisions included in article 131(2)(i) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,
and article 132(2)(ii):
2. A right of protection for a trade mark shall not be granted, if the trade mark:
(ii) is identical or similar to a trade mark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark,

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

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

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

January 15th, 2009, Tomasz Rychlicki

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

R-153843

Kenzo Societe Anonyme from France filed a request for invalidation of the right of protection claiming it was granted in violation of articles 8(1) and 9(1)(i) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments.

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

Article 9
(1) Registration of a trade mark for goods of the same kind shall not be permissible where:
i) it resembles a mark registered on behalf of another enterprise to such an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity;

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

R-153843-3D

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

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

Trade mark law, case Sp. 233/07

December 19th, 2008, Tomasz Rychlicki

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

Japanese company Sharp Kabushiki Kaisha has filed a request for invalidation of the right of protection claiming it was granted in violation of article 8(1) and (2) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

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

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

Trade mark law, case II GSK 332/08

October 14th, 2008, Tomasz Rychlicki

On December 1999, Polish company Top Choice Agata Murawska has applied for trade mark registration for word mark WINNER and word-figurative sign W WINNER in Class 21 for goods such as combs, hair brushes and other products and in Class 29 for rollers. In 2003, The Polish Patent Office granted the right for protection respectively R-148543 and R-148540.

R-148540

Inter Vion SA from Warszawa decided to invalidate aforementioned registrations claiming that those trade marks are the company name (the firm) of Tong-Fong Brush Factory Co. Ltd., from Taiwan which is one of the biggest producers of brushes, combs and mirrors (60 milions of pieces produced in 2000). The WINNER sign, although not registered, was used by Taiwanese company since 1997 on the Polish market. The Company from Taiwan presented an offer involving a series WINNER products to several of Polish companies, including Inter Vion and Top Choice. Since 1998 Top Choise has imported the above-mentioned accessories bearing WINNER trade mark, first by intermediaries, and since 2000 directly from the Taiwanese company. InterVion has signed its first importation contract for WINNER products in 1999. The company has presented first images of these goods in its directory of 1999/2000. During invalidation proceedings before the Polish Patent Office InterVion has alleged that Top Choice, by registering the disputed marks, tried to gain a monopoly on the importation of products.

The PPO invalidated WINNER and W WINNER trade marks in its decision of 4 October 2006, act signatures Sp. 119/05 and Sp. 46/06. The Voivodeship Administrative Court in Warsaw has dismissed Top Choice’s appeal complaints in its judgments of 27 August 2007, case files VI SA/Wa 114/07 and VI SA/Wa 115/07.

Top Choice filed a cassation complaint before the Supreme Administrative Court claiming that VAC erred in its findings and violated the administrative procedure rules. The SAC in its judgment of case file II GSK 332/08 dismissed the cassation and based its arguments on procedural errors included in Top Choice’s complaint which in court’s opinion lacked proper claims’ construction. However, SAC also held that company who registered other company’s name as a trade mark acted in bad faith which was a sufficient circumstance to declare invalidation of such trade mark by the PPO.

Trade mark law, case II GSK 98/07

July 6th, 2008, Tomasz Rychlicki

On 8 November 2004, the Polish Patent Office received a request from JOOP GmbH on the invalidation of the right of protection for JUUPI! R-103654 trade mark owned by “AQUAREL” Kosiorek Spółka Jawna. The applicant has based its legal interest on the fact that questioned sign is similar to JOOP! R-64463 trade mark, registered on his behalf with an earlier priority, and to international trade mark registration JOOP! IR-739262.

The request was based on provisions of article 165 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments.

Article 165
1. A request for invalidation of the right of protection shall not be admissible:
(i) on the ground that it conflicts with an earlier trademark or the personal or economic rights of the requesting party have been infringed, where the requesting party has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use,
(ii) after the expiration of a period of five years from the grant of the right of protection, where the right in question was granted in breach of the provisions of Article 129, however in consequence of its use the trademark has acquired a distinctive character,
(iii) on the ground that it conflicts with a well-known trademark, where the party entitled to the well-known trademark has acquiesced, for a period of five successive years of the use of the registered trademark, in the use of the latter while being aware of such use.

2. Paragraph (1) shall not apply, where the holder of the right has acquired the right in bad faith.

The PPO dismissed the request. The Voivodeship Administrative Court in its judgment of 13 October 2006 case file VI SA/Wa 1339/06 rejected the appeal filed by JOOP GmbH and upheld the decision of the PPO. JOOP filed a cassation complaint.

The Supreme Administrative Court in its judgment of 5 July 2007 case file II GSK 98/07 held that “being aware of the use of the mark” means that the applicant, who requested for the invalidation based on provisions of article 165 of the IPL, had knowledge about the use of that trade mark by its proprietor. One cannot extend the scope of this statutory condition for “the possibility” or “the duty” to finding out or getting acquitant that such mark is being used by its proprietor. The Court ruled that it’s impossible to accept the existence of a general legal obligation that could be put on entrepreneurs to “track the competition” in order to be aware of the use of different trade marks on the market.

Trade mark law, case VI SA/Wa 1791/07

June 19th, 2008, Tomasz Rychlicki

In March 2005 the Polish Patent Office (PPO) issued a decision in which it granted a trade mark right for the word-figurative MILEA trade mark R-162082 in classes 3, 5 and 16 to Ogólnopolskie Centrum Dystrybucji HURT-SERWIS Spółka z o.o.. Nivea Polska Spółka Akcyjna – the owner of NIVEA trade mark and German company Beiersdorf AG opposed this registration in classes 3 and 5. The opponents claimed that MILEA mark was confusingly similar to the NIVEA R-23977 mark for which trade mark rights have been held since 1933 and which acquired the status of a well-known trade mark, having a good reputation in the Republic of Poland. Accordingly the owner had registered MILEA mark in bad faith to take the advantage of fame and repute of the earlier mark.

This case concerned provisions of article 132(2)(iii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments.

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

The PPO examined both marks in the visual, aural and conceptual aspects and did not find any similarity. The owner of the mark claimed that goods for which both marks are registered differed. The PPO and the Court did follow such argumentation. The Court also ruled that present consumers are better educated and well-informed, which in consequence does not lead to confusion as regards the origin of goods. Based its findings on the fact that both marks are not similar the Court did not find any circumstance of bad faith in the owner’s action.

Judgment of the Voivodeship Administrative Court (VAC) in Warsaw of 24 February 2008, case file VI SA/Wa 1791/07.

Trade mark law, case VI SA/Wa 1626/05

June 8th, 2008, Tomasz Rychlicki

Toyota Corp. filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection for lexus R-140774 trade mark that was registered for Lubuska Wytwórnia Wódek Gatunkowych “POLMOS” w Zielonej Górze for goods in Class 33 such as alcohols. Toyota argued that this registration was made in bad faith as parasitic use of the reputation of its renown trademarks. The PPO dismissed the opposition and Toyota filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 13 March 2006 case file VI SA/Wa 1626/05 overturned the questioned decision and held it unenforceable. The VAC ruled that the reputation of a trade mark means nothing more than its attractive strength, the value of advertising and generally positive perceptions of consumers. The protection of reputed trade marks may occur outside the similarity of the goods. Furthermore, as it was noted in the judgment of the Voivodeship Administrative Court of 8 November 2005, case file VI SA/Wa 845/05, the reputation of a trade mark is not dependent on the borders of countries or regions.

Trade mark law, case II GSK 13/07

July 19th, 2007, Tomasz Rychlicki

Wierzbicki Jan, Krzywdziński Andrzej Przedsiębiorstwo Produkcyjno Handlowo Usługowe MACRO applied to the Polish Patent Office (PPO) for “ŚWIAT KAWY I HERBATY” (TEA AND COFFE WORLD) trade mark Z-205579, for goods in classes 30, 42. Dariusz Z. who conducts its business under the firm “Świat Kawy i Herbaty” and who had established contractual relationships with the applicant, submited to the Patent Office his observations as to the existence of grounds that may cause a right of protection to be denied. The PPO refused to grant rights of protection for “ŚWIAT KAWY I HERBATY” trademark. MACRO filed a complaint. The Voivodeship Administrative Court in its judgment of 27 July 2006 case file VI SA/Wa 871/06 upheld the contested decision and MACRO filed a cassation complaint.

The Supreme Administrative Court in its judgment of 24 May 2007 case file II GSK 13/07 held that the firm (company name) of a individual person is its personal right/interest and it may be an obstacle to registration of a trade mark. According to the SAC, the sale of goods on the stand/trading post under the trade name identical to that trade mark cannot be treated as a trade mark use since the essence of the trade mark is to identify the goods with a particular trader, and the use of the mark should primarily consist of placing a mark on the products or their packaging.