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Archive for: distinctive character

Trade mark law, case VI SA/Wa 586/11

January 2nd, 2012, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark @ @lfanet Z-331247 applied for by @ALFANET Marcin Małolepszy from Borowo Kolonia for for goods and services in Classes 09, 37, 38, 42 and 45.

Z-331247

The PPO decided that the applied trade mark is similar to the word trade mark ALFANET R-145012 registered with the earlier priority for the Polish company ALPHANET sp. z o.o. for services in class 38. The PPO did not agree with the applicant that ALFANET sign has weak distinctive character. Although the ending “net” is not distinctive for services related to the IT industry, but combined with the word “alpha”, it creates a neologism, which can be deemed as a fanciful sign.

Mr Małolepszy filed a complaint against the decision of the PPO, arguing that grant of a right of protection for a trade mark in respect of specific goods should not constitute an autonomous ground for refusal to grant a right of protection for a trade mark in respect of the goods identical or similar to those of another undertaking for a sole reason that the trade mark contains an identical or similar sign which refers to personal interests, in particular the owner’s name.

The Voivodeship Administrative Court in Warsaw in its judgment of 24 June 2011 case file VI SA/Wa 586/11 dismissed the complaint and held that the argument that the applicant relied on is an exception to the rule of inadmissibility of the coexistence of similar signs, and as such can not be broadly interpreted, and it should be applied with caution, taking into account not only the ratio legis, but also the principles provided in the Polish Industrial Property Law, that relate to trade marks and their basic functions. Although the provisions of Article 135 of the IPL, in contrast to previous regulations, do not include the condition that the applied trade mark should not be misleading, but, in the opinion of the Court, the interpretation that would lead to the registration of two identical or similar trade marks for identical goods and/or services, could not be accepted.

Trade mark law, case VI SA/Wa 1291/11

November 23rd, 2011, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark LAW24.pl applied for the Polish law firm Komarnicka Korpalski Kancelaria Prawna sp.j for services in Class 35 such as advising on business and business management consultancy, in Class 36 such as financial consultancy and financial and accounting activity, and in Class 42 such as legal services.

Z-341137

The PPO pointed out that the sign was applied for broadly defined legal services, and it cannot be registered because it lacks sufficient distinctive character, therefore it cannot be the subject of exclusive rights as others would have been deprived of the possibility to use it. The PPO noted that the applied trade mark is a company name, but there are different regulations regarding company names and the names of individuals. The PPO ruled that the right to the company name is not absolute, effective in relation to all (erga omnes). The PPO stated that the case of each applied trade mark is always considered individually on its specific conditions, so the argument that there is plenty of registered trade marks that include the word “law”, and the PPO should also grant the right of protection in this case, was rejected The PPO did not agree with the argument that recent visits to the website could prove that the trade mark in question has acquired secondary meaning. According to the PPO, the applicant has not submitted any evidence documents to confirm it. Komarnicka Korpalski Kancelaria Prawna filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 31 August 2011 case file VI SA/Wa 1291/11 dismissed it. The Court agreed with the PPO and held that Internet address identifies a legal or natural person, but this identification is not equivalent, that the services provided by such person are marked with the same deisgnation.

Trade mark law, case VI SA/Wa 396/11

November 8th, 2011, Tomasz Rychlicki

EAST SEA POLAND Spółka z o.o. filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark BIEN DÔNG R-204010 registered for services in Classes 36, 39 and 43, and owned by AEROCENTER TRAVEL Trinh Huy Ha.

R-204010

EAST SEA claimed that this mark is descriptive, because in the translation from Vietnamese to Polish language, it is the name of the South China Sea – Biển Đông. This name is the official designation of the geographic area used in the Socialist Republic of Vietnam and as such it should remain free to use on the market. The company argued that this trade mark may lead to consumers’ confusion, in particular those of Vietnamese nationality, as to the nature or characteristics of services provided by the owner, because the sign in its content relates to the maritime area, which is associated with maritime transport, and not to the services that it was registered for. EAST SEA argued that the Bien Dong designation may be misleading as to the place where services are provided, as the owner provides its services in Poland and not in Vietnam. It is worth mentioning that EAST SEA applied for three trade marks that include BIEN DONG words.

Z-290648

AEROCENTER TRAVEL argued that the Bien Dong is strictly abstract expression for the average Pole who doesn’t know what it means in Vietnamese. The Company disagreed, that this is false or fraudulently marked geographical origin of their services, since none of the customers going to the office in Warsaw would expect it to be in Vietnam at the South China Sea.

The Polish Patent Office dismissed the opposition and EAST SEA POLAND decided to file a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 13 May 2011 case file VI SA/Wa 396/11 dismissed it and held that the Polish Industrial Property Law – in principle – does not preclude the registration in Poland as a national trade mark, the word that is taken from the language of another country in which language this word is devoid of distinctive character or it is descriptive for the goods or services for which the registration was sought, unless recipients/consumers in the State in which registration is sought, would be able to read the meaning of this word.

Trade mark law, case II GSK 553/10

August 19th, 2011, Tomasz Rychlicki

Przedsiębiorstwo Przemysłu Spirytusowego POLMOS w Warszawie applied for the right of protection for the word trade mark „spirytus rektyfikowany” (in English: rectified spirit) Z-204843. The Polish Patent Office refused to grant the right of protection. The PPOo ruled that this designation is purely descriptive. It informs about the type of product and how it is produced, and while examined as a whole, this sign does not have any sufficient distinctive character in relation to goods for which it was filed. Therefore, it will not allow for the identification of the goods available on the market in terms of their origin. The PPO decided also that this sign is devoid of any characteristic features that may engrave into memory of the recipient and lead to the association with the entrepreneur, from which they originate. The recipient buying the goods bearing the sign in question will be informed about the characteristics of the product, not its origin. POLMOS claimed that „spirytus rektyfikowany” has acquired secondary meaning.

The PPO did not agree with the argument that a number of word-figurative trade marks containing the term “rectified spirit” that were registered for POLMOS supports the position that this trade mark has acquired secondary meaning, because all these trade marks were registered by the PPO because of its graphics and not the distinctive character of the disputed sign. The PPO concluded that the information on the secondary meaning posted on Wikipedia website can not be considered fully reliable evidence and Wikipedia cannot be treated as the professional source of information. The PPO noted that the fact that POLMOS was able to register the word mark “rectified spirit” in the United States has no impact on the examination of trademark application Z-204843, because the Polish system is completely autonomous. The PPO noted that even POLMOS is advertising its main product as a word-figurative trade mark, where both words are placed on the green-yellow label.

POLMOS filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 14 December 2009 case file VI SA/Wa 1859/09. POLMOS filed a cassation complaint.

The Supreme Administrative Court in its judgment of 18 May 2011 case file II GSK 553/10 dismissed the complaint. The Court cited the Dictionary of Polish language, published by PWN SA, the Internet edition, in which the word spirit is defined as a generic name of a specific type of alcoholic product – a high percentage water solution of ethyl alcohol. The word “rectified” is as an adjective derived from the noun “rectification” and it means the separation of liquid mixtures by repeated evaporation and condensation. The concept of rectification is commonly associated with a technological process, even if the recipient does not know the specific method. In conjunction with the first of the words in the trade mark in question it is associated with a way to produce a particular product. The two words – “rectified spirit” – contain only information about the type of product and how to produce it, and as such do not have sufficient distinctive character. The SAC shared in this regard the view expressed by the Supreme Administrative Court in its judgment of 18 June 2008 case file II GSK 185/08. See also “Trade mark law, case II GSK 185/08“. The Court ruled that there was no reason to assign a long use and the reputation only to the “rectified spirit” designation as separated from other elements of a word-figurative trade mark that was corresponding to the label on the bottle. The SAC noted that a trade mark is an indivisible whole. The use of a word-figurative trade mark does not mean that association between the word element and a particular entrepreneur arise in the minds of the consumer.

Trade mark law, case II GSK 466/10

July 5th, 2011, Tomasz Rychlicki

Aquatherm GmbH registered a single green color determined by RAL 150 60 40 as a trade mark IR-863506 for goods in Class 19 such as rigid pipes of polypropylene for the supply of drinking water and heating and air conditioning systems in houses, office buildings and industrial buildings. The Company sought the recognition of the protection of its trade mark on the territory of the Republic of Poland based on the provisions of the Madrid Agreement Concerning the International Registration of Marks.

IR-863506

On 11 July 2006, the Polish Patent Office transmitted to the International Bureau in Geneva a notification of the grounds which prevent the protection of an international trademark to be recognised on the territory of the Republic of Poland. The PPO decided that according to Article 120 of the Polish Industrial Property Law this trade mark cannot distinguish the goods, because it is a single color and it is devoid of sufficient distinctive character.

On 20 April 2007, the Patent Office sent a letter to the International Bureau with information concerning the correction of a clerical error in the notification dated 11 July 2006, informing that the provisional refusal to recognize the protection should include Article 129(1)(ii) and Article 129(2)(i) of the IPL and not Article 120 of the IPL. At the same time, the PPO did not consider the request of the Aquatherm GmbH to initiate an administrative hearing on the correction of this error. The PPO pointed out that the correction did not change the legal basis of the notification. The difference in the numbering of Articles 120 and 129 was a result of unfortunate, in this case, close arrangement of numbers 9 and 0 on the computer keyboard.

The Polish Patent Office in its decision of 9 May 2008 case DT-IR-863 506 refused to recognize the protection. Aquatherm GmbH filed a request for re-examination of the matter, but it was dismissed by the PPO in its decision of 10 June 2009 case PT-430/08 IR-863 506. The PPO did not agree with the Aquatherm GmbH that the registration on its behalf of the earlier trade marks such as IR-832895 or IR-837655 justifies the registration of the applied sign because each case is decided according to individual circumstances. The PPO held that it has not changed, as a result of correcting errors, the legal basis of the refusal.

Aquatherm GmbH filed a complaint against these decisions. The Company argued that the PPO infringed on Article 5(2) of the Madrid Agreement because it took its decision after the expiration of one year term that is calculated from the date of the international registration of the mark. The provisions that were used as the basis for refusal, were first indicated in the letter of 20 April 2007. Aquatherm GmbH argued also that the PPO mistakenly determined that the goods included in the list of goods and services are everyday consumer goods targeted for mass audiences, and that the green color is commonly used for the determination of water supply pipes, and aqueous solutions. According to the Company, the PPO has not made an exhaustive evaluation of the evidence, in particular, it completely ignored the key evidence submitted by the company in a statement of the Polish Corporation of Sanitary, Heating, Gas and Air-Conditioning Technology which included information on whether a given color may indicate the manufacturer
on the market of installations polypropylene systems, and whether the green color used as designation of pipes or installations allows the buyers to identify these products with Aquatherm GmbH.

The Voivodeship Administrative Court in its judgment of 3 December 2009 case file VI SA/Wa 1452/09 dismissed the complaint. The VAC held that the provisional refusal cannot be considered ineffective. According to the Court, the PPO indicated the grounds for refusal which was in accordance with the Rule 17 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. The Court noted that in the case of color per se its concrete distinctive ability must be interpreted in the light of public interest, which is based on the rules of the limited reduction of the availability of colors for other entrepreneurs who offer goods or services of the same kind as the goods or services covered by the registration application. The basic function of the trade mark is to guarantee the final consumer or user the identity of the origin of the goods or designated services bearing the trade mark by letting them distinguish the goods or the service of goods or services of different origin. The distinctive character of the sign is based on such features which in the minds of consumers clearly indicate that a particular product bearing a given trade mark comes from the specific company. The VAC noted that in relation to the color per se, it is assumed that the existence of primary distinctive characteristic (without any prior use) is possible only in exceptional circumstances, especially when the number of goods or services for which the mark is applied for is very limited and when the relevant market is very specific. The Court noted that the green color in relation to the applied goods is not unusual. The VAC agreed with the PPO that, in the case of green color used for the pipes used for water flow, there is a risk that consumers will associate it with nature, therefore, it should not be monopolized by one company, in particular, that this shade of green RAL 150 60 40 is also not original.

Moreover, the VAC found that the Patent Office has rightly used the example of PN-70/N-01270 standards Guidelines for marking of pipelines. The standard recommends that the painting for the identification of pipelines made of carbon steel or other materials susceptible to corrosion should be coordinated with anticorrosive painting in which the topcoat should also fulfill the function of identification. It is customary to use green for water and chemical solutions that pose no chemical and thermal threat. The Court noted that the statement of the Polish Corporation of Sanitary, Heating, Gas and Air-Conditioning Technology could be helpful to support Aquatherm position, but also found that such a document can not be regarded as expert evidence under the provisions of Polish Administrative Proceedings Code or substitute evidence for opinion polls.

The Supreme Administrative Court in its judgment of 15 April 2011 case file II GSK 466/10 dismissed the cassation. The SAC agreed with the findings included in the judgment of the VAC and ruled that the provisional refusal to recognize the protection is, by its very nature, some kind of a general statement issued by an authorized body of the state that is the party to the Madrid Agreement, and it includes the grounds which prevent the protection of an international trademark to be recognized on the territory of the Republic of Poland. The reasons given in the notification of provisional refusal set the boundaries within which the Polish Patent Office then investigates the case and its matter. However, as it was mentioned, the notification is of a general (signaling) nature and it is clarified in a subsequent administrative proceedings. In the event of a dispute, the position included in the notification is subject to detailed examination by the administrative courts, reflecting inter alia the context of a trade mark application, the nature of the applied sign, etc. As a consequence, the reasons of a provisional refusal should be explained in general terms and take into account all the circumstances specified in the notification by the authority.

Trade mark law, case II GSK 368/10

June 10th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated in part the right of protection for 100 R-156995 trade mark that was registered for Agencja Wydawnicza TECHNOPOL Spółka z o.o. for goods in class 16 such as posters, albums, almanacs, stationery, blocks, drawing blocks, brochures, magazines, charade journals, prints, forms, newspapers, calendars, calendars with tear loose, filing cards, cards, card-notices, postcards, comics, books, crossword puzzles, stickers, notepads, covers, stationery, bookmarks, drawing kits, notebooks. Technopol filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in Warsaw in its judgment of 7 December 2009 case file VI SA/Wa 1677/09. Technopol decided to file a cassation complaint.

R-156995

The Supreme Administrative Court in its judgment of 15 March 2011 case file II GSK 368/10 dismissed the complaint in part. The SAC held that the designation, which is in fact the number 100 is a highly informative sign for magazines and journals containing charades, and, as such may not be the monopolized by one entity that would like to use it for marking crosswords magazines. The Court noted also that adding to a trade mark any image does not yet give the sign a concrete distinctive character.

Trade mark law, case VI SA/Wa 86/11

May 10th, 2011, Tomasz Rychlicki

The Polish Patent Office dismissed the request for the invalidation of the word trade mark Laurina R-186513 registered in Class 31 for goods such as seeds of dwarf yellow pod common bean, fresh dwarf bean, yellow pod bean. The applicant filed a complaint against this decision.

The applicant argued that the mark does not have sufficient distinctive characteristic because it is the name of common bean varieties that was entered into the national registry in Poland. The names of plant varieties are used to distinguish plant, and not their origin from specific growers or producers. The more important argument was that new names of plant varieties can be protected for cultivators only under the provisions of the Act on the Legal Protection of Plant Varieties -LPPV – (in Polish: ustawa o ochronie prawnej odmian roślin) of 26 June 2003, published in Journal of Laws (Dziennik Ustaw) No. 137 item. 1300 with subsequent amendments. The present variety is not subject to such protection and seeds marked with Laurina are marketed by many manufacturers, and following all the procedures provided for in the LPPV.

The Voivodeship Administrative Court in Warsaw in its judgment of 8 April 2011 case file VI SA/Wa 86/11 annulled the contested decision and held it unenforceable. The Court ruled that the distinctiveness of word trade marks should be assessed primarily in relation to specific goods that will be bearing such a sign. Informational or descriptive nature of a sign is a feature that demonstrates a lack of concrete, not abstract distinctiveness of a trade mark. The assessment should be made also in relation to the so-called “ordinary course of business/trade”, taking into account the views of the criterion of the average consumer.

Trade mark law, case VI SA/Wa 2180/10

April 19th, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 11 March 2011 case file VI SA/Wa 2180/10 ruled that the word-figurative trade mark 60 R-156991 is not sufficiently distinctive in standard business transactions because it does not individualize the goods of the trade mark owner among the goods of the same type that originate from different companies.

R-156991

The Polish Patent Office properly assessed the consumers of goods such as crosswords publications, and considered this groups as very diverse. Its members are people of different ages and different levels of education. There was no reason to believe that such a broadly defined consumer will identify a specific numerical designation with a given publisher, not the number of crosswords included in the publication. This judgment is not final yet.

Trade mark law, case II GSK 67/10

April 14th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for the word-figurative trade mark 1001 R-157046 registered for goods in Class 16 such as posters, albums, almanacs, stationery, blocks, drawing blocks, brochures, magazines, charade magazines, prints, forms, newspapers, calendars, calendars with loose pages, filing cards, cards, card-notices, postcards, comics, books, crossword puzzles, stationery, stickers, notepads, covers, bookmarks, drawing kits, notebooks, and owned by Agencja Wydawnicza TECHNOPOL Spółka z o.o. The PPO ruled that this trade mark lacks distinctiveness. TECHNOPOL filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 18 September 2009 case file VI SA/Wa 1164/09. Technopol filed a cassation complaint.

R-157046

The Supreme Administrative Court in its judgment of 10 February 2011 case file II GSK 67/10 dismissed it and ruled that a trade mark which lacks primary distinctiveness will acquire distinctiveness or secondary meaning through advertising, if it is used for so long that it will be associated not with the original descriptive content, but the source of its origin – a specific goods produced by a particular manufacturer. The practice of different publishers who used different numbers and numerals in tiles of magazines did not allow for 1001 to acquire secondary meaning.

Trade mark law, case VI SA/Wa 1090/10

January 20th, 2011, Tomasz Rychlicki

Polish entrepreneur “MALWA” Tea Wojciech Fabisiak from Lubiszyn applied for the right of protection for FITO APTEKA Z-327704 trade mark for goods in Classes 05, 30, 35 and 39 such as medicinal tea, medicinal drinks, medicinal herbs, tinctures of herbs for medicinal purposes, extracts of herbs for medicinal purposes, herbal tea, medicinal herbs, dried herbs, herbal mixtures for medical purposes, tea, ice tea, fruit tea, instant tea, coffee, coffee substitute, coffee substitute vegetable preparations, retail services and/or wholesale to third parties in the field of herbs, packaging of herbs, tea packaging. The Polish Patent Office refused to grant the right of protection. The PPO found that the sign in question contains two verbal elements “Fito” and “Apteka”. The word “fito” according to the Dictionary of Foreign Words PWN (published by PWN, in 1993) is a first element of compound words that are denoting plants, for plants (from Greek “phyton” – plant). The word “Apteka” (in English: pharmacy) indicates the type of store where drugs are sold or made, as well as herbs, some cosmetics, pharmaceuticals, herbal teas, coffee. The PPO ruled that the applied signs lacks distinctive character. MALWA filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 November 2010 case file VI SA/Wa 1090/10 dismissed the case. The VAC agreed with the PPO and held that the trade mark is devoid of distinctive character, where the words making up the sign in question have their specific meaning, both alone and in combination. The trade mark should provide information on the origin of goods from a particular manufacturer, and no information about the type of goods. The Court ruled that in case of word trade marks the criteria for granting a right of protection are much stricter than for word-figurative trade marks (combined signs) due to less room for maneuver for other businesses wanting to use a given word. The registration of a word trade mark, which lacks fanciful elements, but consist of a generic name, may unreasonably restrict the right of other entrepreneurs to describe their products.

Trade mark law, case VI SA/Wa 1127/10

January 13th, 2011, Tomasz Rychlicki

POSTI S.A. applied for the word-figurative trade mark “POSTI Fitea man HERBATKA WSPOMAGAJĄCA ODCHUDZANIE z owocem z czarnego bzu i anyżem doskonały smak świetny efekt” Z-334117 for foods in Classes 05 and 30. The Polish Patent Office refused to grant the right of protection. The PPO ruled that there exist similarity between applied sign and the word-figurative trade mark “fittea” R-178995 owned by “BIOFLUID” Spółka Jawna from Górki Małe. POSTI filed a complaint against this decision.

Z-334117

The Voivodeship Administrative Court in its judgment of 5 November 2010 case file VI SA/Wa 1127/10 anulled the decision. The Court ruled that the PPO examined only verbal elements of both signs. The VAC ruled that the main distinguishing element of marked goods or services is, in principle, the word, because the recipient usually remember the sign and the marked product (service) based on the verbal element/s.

R-178995

However, the principle of the dominant meaning of the word elements in the combined trade marks is fully applicable, particularly when figurative and 3D elements have less distinctive character, or are completely devoid of this ability. This judgment is not final yet.

Trade mark law, case VI SA/Wa 1126/10

January 12th, 2011, Tomasz Rychlicki

POSTI S.A. applied for the word-figurative trade mark “POSTI Fitea HERBATKA WSPOMAGAJĄCA ODCHUDZANIE Z ANANASEM I CZERWONYM GREJPFRUTEM” Z-334116 for foods in Classes 05 and 30. The Polish Patent Office refused to grant the right of protection. The PPO ruled that there exist similarity between applied sign and the word-figurative trade mark “fittea” R-178995 owned by “BIOFLUID” Spółka Jawna from Górki Małe. POSTI filed a complaint against this decision.

Z-334116

The Voivodeship Administrative Court in its judgment of 5 November 2010 case file VI SA/Wa 1126/10 annulled questioned decisions. The Court ruled that the internal characteristics of the trade mark, including descriptive elements (or lack of such) of the goods and services for which it is registered, the market share of trade mark in question, the intensity and temporal and geographical scope of the use, investments in promotion and advertising, the percentage of relevant recipients, who because of the trade mark are able to identify products or services as originating from a particular company, must be taken into account when establishing the existence (or nonexistence) of recognition of the trade mark with an earlier priority.

R-178995

The Court ruled that the PPO should determine the mentioned above conditions and the outcome will help to assess the risk of confusion as to the origin of the goods which may occur if the protection was granted for the sign in question. The judgment is not yet final.

Trade mark law, case VI SA/Wa 1133/10

October 25th, 2010, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case II GSK 496/09“. The Voivodeship Administrative Court in Warsaw in its judgment of 4 August 2010 case file VI SA/Wa 1133/10 anulled the PPO’s decision and ruled it unenforceable. The Court held that the Polish Patent Office, while assessing the similarity of the opposing signs, ignored in general the question of the impact of a trade mark on recipient/consumers/buyers of the goods bearing the sign, and therefore it did not considered in a comprehensive way the impact of the entire mark, focusing only on one of its verbal elements – PREMIUM word, without attempting to explain the “impact strength (distinguishing ability)” of PREMIUM word as an informational sign that is used to designate the exceptional quality of a product.

IR-802093

In the opinion of the courts, this issue is very important, because while examining the compared signs, the impact of the opposing character – its distinctive ability may not be indifferent, and a “weak” sign must often tolerate the coexistence of the close signs. See U. Promińska, Ustawa o znakach towarowych. Komentarz, Wydawnictwo Prawnicze PWN, Warszawa 1998, p. 42.

Trade mark law, case VI SA/Wa 501/10

October 25th, 2010, Tomasz Rychlicki

The Polish company EDIPRESSE POLSKA S.A. from Warsaw applied for the right of protection for word trade mark NEW Z-294152 for goods in Classes 16, 35 and 41. The Polish Patent Office refused to register this sign claiming that it does not have sufficient distinctive character that would allow to individualize the source of the goods. The PPO concluded that the sign is not distinctive, because it informs that the goods and services for which the registration is sought, are… new. EDIPRESSE filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 May 2010 case file VI SA/Wa 501/10 held that the common practice of the Polish Patent Office in registering trade marks containing descriptive elements was definitely too liberal, especially if it is considered that while examining the registrability, the future interest of other entrepreneurs in access to a given sign should be taken into account. According to the VAC there must be a significant reduction in the number of registered trademarks with the descriptive elements, geographical or generic names, as the result of understanding the proper function of a trade mark, because the primarily function of a trade mark is to indicate the origin of the goods from a particular undertaking. If, therefore, the applied sign may be perceived by the average consumer as information about the characteristics (properties) of goods or services, the origin from a particular geographic area, it cannot be a trademark due to lack of distinctive ability which is required for trade marks. The importance of the principle of freedom of access to certain descriptive signs must therefore lead to a significant reduction in the number of signs with descriptive elements that were registered as individual trade marks. The judgment is not final.

Trade mark law, case VI SA/Wa 1117/10

October 15th, 2010, Tomasz Rychlicki

On 25 May 2006, the Polish company AERECO Wentylacja Sp. z o.o. applied for word-figurative trade mark HIGROSTEROWANIE Z-311192 for goods in Classes 07, 09, 11 and 35. The Polish Patent Office refused to grant the right of protection, claiming that the applied sign does not have sufficient level of distinctive character. The PPO pointed out this trade mark is built from the core “sterowanie” (in English: controling/steering) and the prefix higro (English: hygro) which indicates a semantic link to the humidity. The sign that is created from these two elements, although not listed in dictionaries, is not a fanciful term and simply means “to regulate humidity”.

Z-311192

AERECO filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 8 September 2010 case file VI SA/Wa 1117/10 dismissed the case and ruled that both in the legal commentaries and the case law of administrative courts, it is considered in particular that the descriptive sign is one that has the characteristics of the topical, concrete and direct descriptiveness. The topicality of the signs should be assessed on the objective basis and consist of examining whether from the perspective of current market conditions, a sign is useful for description of the goods and if as such it should be accessible to all participants. The rule of concrete descriptiveness states that a sign which indicates the specific characteristics of the product for which the designation is intended may be exempted from the registration as descriptive one. The direct descriptiveness occurs when a descriptive sign informs directly, clearly and unambiguously about the characteristics of a particular goods, so that characteristics may be interpreted directly, and not by associations.

The Court shared the position of the PPO, that the the questioned sign simply means “controling humidity” and thus explicitly indicates the characteristics of the designated goods and can not be appropriated to describe the products or services of one company. The VAC did not find anything fanciful in the figurative element of the HIGROSTEROWANIE trade mark.