Polish IP & IT law » distinctive character

Archive for: distinctive character

Trade mark law, case II GSK 496/09

July 2nd, 2010, Tomasz Rychlicki

The Polish Patent Office has refused to recognize the right of protection for a trademark PREMIUM DE-LUXE NEMIROFF IR-802093 registered for Nemiroff Intellectual Property Establishment because of its similarity to a series of earlier trade marks owned by the Pokish Company Wyborowa S.A. This series included word trade mark PREMIUM R-71602, PREMIUM VODKA R-82601, GOLD PREMIUM R-108603 and many others. Nemiroff filed a request for reconsideration claiming that the word “Premium” with respect to alcohol is often used to describe more accurately its class and quality and in this connection it has no distinctive character. Consumers are choosing alcohol based on its quality and the name of the manufacturer.

IR-802093

The Patent Office upheld the contested decision. The PPO explained that the most exposed part of the questioned trade trade is the word PREMIUM, because of its location, size and bright color in contrast to the soothing white-blue-gray color of the rest of the sign.The PPO stated that the word “Premium” is easy to remember, but it has rather poor degree of distinctive character, which are often used to denote exceptional quality. The figurative elements of the mark in such a situation may not be sufficient to exclude the likelihood of misledading the purchasers as to the origin of the goods, in particular, it will not help to exclude the associations between characters. Although the PPO agreed with the position of the parties as to the universality of the word “Premium” in trade, however, the PPO also noted that in the strict sense it may be a distinctive sign in Poland, and it is the most exposed element in questioned trade mark. The broad and long-term use of it in the form of trade marks used by Wyborowa S.A. allowed it to acquire a secondary meaning. Given the above, the Patent Office found that in normal economic turnover PREMIUM DE-LUXE NEMIROFF may mislead the public as to the origin of the goods, as well as infringe the rights of protection of the owner of the opposed trade marks.

Nemiroff filed a complaint. The Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 27 November 2008 case file VI SA/Wa 1583/08 sided with PPO’s opinion. The VAC held that the Office properly decided that the questioned trade mark is similar to a series of earlier registered trade marks, all including the distinctive word element „Premium”, which created the risk of the public being misled.

Nemiroff filed a cassation complaint. The Supreme Administrative Court in its judgment of 23 March 2010 case file II GSK 496/09 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that the VAC erred in assessing the similarity between the opposing trade marks by focusing only on one element – the word “Premium”, without trying to explain its distinctive character as a designation of exceptional quality of a product. Then it would be difficult to talk about the fact that the earlier registered trade marks with the word ‘Premium” come from one source. The owner of a sign that has weak distinctive character must often tolerate the coexistence of the similar trade marks.

Trade mark law, case VI SA/Wa 274/10

June 1st, 2010, Tomasz Rychlicki

On 14 March 2005, the Polish company PMB S.A. from Białystok applied for “dębowa mocno wędzona” (oak heavily smoked) trade mark Z-292377, for goods in class 29 such as meats, smoked products and offal products.

The Polish Patent Office denied to grant a right of protection and PMB filed a complaint to the administrative court. The Voivodeship Administrative Court in Warsaw in a judgment of 14 April 2010, case file VI SA/Wa 274/10, rejected the complaint. According to the Court, in this case, the PPO correctly held that PMB has not shown that the sign has acquired distinctiveness. As it was clear from case files, the only evidence provided by PMB was statements of sales of products marked with the questioned sign as of January 2005. The issue of acquisition of secondary meaning (acquired distinctiveness) is taken into account together with all the circumstances of the presence of a sign on the market, including such as: market share, the intensity, geographical extent, duration of the use of a trade mark, investments in advertising, the percentage of a relevant group of customers who recognize the sign as an indication of origin from a particular entrepreneur, etc. Such evidences must come prior to the date of filing of a trademark application with the Polish Patent Office. The Court commented on the Community case law in which the evidence of secondary meaning is also allowed from the period after the date of trade mark application, if they show that acquired distinctiveness already existed at that date.

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

Trade mark law, case V CSK 71/09

March 11th, 2010, Tomasz Rychlicki

Technopol Publishing Agency filed a suit against Phoenix Press and Bauer Publishing House. Technopol requested the court to prohibit both defendants from putting on the market all magazines and periodicals bearing the number “100″ or its multiples, and journals bearing the titles composed of three Arabic numerals together with the words “panorama” (in Polish: panorama) or “panoramic” (in Polish: panoramiczny), and to order the withdrawal of such publications from the market, to order the publication of an apology of specific content in the press, to order the defendants to pay the amount of 75000 PLN as compensation and the amount of 99000 PLN as unjustified benefits received by the defendants as a result of the unlawful use of Technopol’s trade marks, and to order defendants to withdraw particular trade mark applications from the Polish Patent Office.

Technopol argued that it has introduced characteristic titles of crosswords magazines, presenting the number “100″ or its multiples, with the words “panorama” or “panoramic” since 1994. Bauer Publishing House gave a licence to Phoenix Press to publish crosswords magazine entitled “Chwila na 100 panoramicznych”. Later on, Phoenix Press began to publish crosswords magazines with titles composed of the multiple of “100″ and the “panoram” word.

Technopol based its claims on articles 3, 10 and 18 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with later amendments.

Article 3
(1) The act of unfair competition shall be the activity contrary to the law or good practices which threatens or infringes the interest of another entrepreneur or customer.
(2) The acts of unfair competition shall be in particular: misleading designation of the company, false or deceitful indication of the geographical origin of products or services, misleading indication of products or services, infringement of the business secrecy, inducing to dissolve or to not execute the agreement, imitating products, slandering or dishonest praise, impeding access to the market and unfair or prohibited advertising and organising a system of pyramid selling.
(…)
Article 10
(1) Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and another significant features of products or services as well as concealing the risks connected with their use, shall be the act of unfair competition.
(2) Releasing for free circulation products in the packing which may cause effects referred to in section 1 above shall be the act of unfair competition, unless the use of such packing is justified by technical reasons.
(…)
Article 18(1) Where the act of unfair competition is committed, the entrepreneur whose interest is threatened or infringed may request:
1) relinquishment of prohibited practices,
2) removing effects of prohibited practices,
3) making one or repeated statement of appropriate content and form,
4) repairing the damage, pursuant to general rules;
5) handing over unjustified benefits, pursuant to general rules,
6) adjudication of an adequate amount of money to the determined social goal connected with support for the Polish culture or related to the protection of national heritage – where the act of unfair competition has been deliberate.
2. The court, upon a motion of the entitled party, may also adjudge on products, their packing, advertising materials and another items directly connected with commitment of the act of unfair competition. In particular, the court may order their destruction or include them on account of the indemnity.

Technopol’s claims were also based on articles 120(2) and 296(1) and (2) 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.

Article 120
1. Any sign capable of being represented graphically may be considered as trademark, provided that such signs are capable of distinguishing the goods of one undertaking from those of other undertakings.
2. The following, in particular, may be considered as trademarks within the meaning of paragraph (1): words, designs, ornaments, combinations of colours, the three-dimensional shape of goods or of their packaging, as well as melodies or other acoustic signals.
(…)
Article 296
1. Any person whose right of protection for a trademark has been infringed or any person who is permitted by law to do so, may demand the infringing party to cease the infringement, to surrender the unlawfully obtained profits and in case of infringement caused by fault also to redress the damage:
i) in accordance with the general principles of law,
ii) by the payment of a sum of money at the amount corresponding to the license fee or of other reasonable compensation, which while being vindicated would have been due on account of consent given by the holder to exploit his trademark.
1a. To the claims referred to in paragraph (1) the provisions of Article 287(2) and (3) shall apply accordingly.

2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(i) a trademark identical to a trademark registered in respect of identical goods,
(ii) a trademark identical or similar to a trademark registered in respect of identical or similar goods, if a likelihood of misleading the public, including in particular a risk of associating the trademark with a registered trademark, exists;
(iii) a trademark identical or similar to a renown trademark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trademark.

Phoenix Press and Bauer Publishing House requested the court to dismiss the suit. They argued that all trade marks in question have only informational character, and they refer to the title of the magazine “Chwila dla Ciebie”, and substantially differ from plaintiff’s trade marks, which excludes the risk of confusion.

The judgments of the District Court and the Court of Appeal did not satisfy any of the parties and as a consequence, both appealed.

The Supreme Court in a judgment of 24 November 2009, case file V CSK 71/09, ruled that the admissibility of a cassation complaint in matters of property rights is dependent on the minimum value of the subject matter of litigation, which in economic cases, cannot be less than 75000 PLN. The legal doctrine and the case law of the Supreme Court has expressed the view that the claims under article 18(1) points 1, 3 and 4, of the CUC have non-financial nature. See judgment of the Supreme Court of 9 March 2006, case file l CZ 12/06, and a judgment of the SC of 9 January 2008, case file II CSK 363/07. But this view has no legal justification which was the most widely expressed by the Supreme Court in the opinion of 8 March 2007, case file III CZ 12/07, published in OSNC 2008/2/26. The Court held that the claims set out in the CUC, though – according to the prevailing view – are not based on the absolute rights (enforceable against anybody infringing that right, an erga omnes right can be distinguished from a right based on a contract, which is only enforceable against the contracting party), they are directly contingent upon economic interests of persons who have the absolute right, and thus have the financial character. This view is justified by the general objective of the unfair competition law as defined in article 1 of the CUC, which is to prevent and combat unfair competition, and by provisions of article 20 of the CUC which set the same term of terminations of actions as for claims ensuing from property rights. For this reason, the Supreme Court dismissed the cassation complaint brought by Phoenix Press.

Technopol based its cassation complaint inter alia on the reputation of its trade marks. The Supreme Court ruled that according to the legal doctrine and the case law established by the SC, the distinction made between well-known and reputed trade marks is based on a different criterion. The reputation of a trade mark means its attractiveness, the value of advertising it creates and the ability to stimulate sales of goods marked with it. It is therefore a criterion referring rather to the special quality of a sign than to the degree of its knowledge. Such opinion was issued by the Supreme Court in a judgment of 7 March 2007, case file II CSK 428/06. The Supreme Court in a judgment of 12 October 2005, case file III CK 160/05, published in OSNC 2006/7-8/132, ruled that, the reputed or renowned trade mark serves as a carrier of information and ideas/opinions about high quality and high prestige. The last word is synonymous with “reputation” in Polish. However, the concept of a reputed/renown trade mark does not indicate an association with the exclusive services or goods of significant value. A renowned trade mark is a carrier of information on a specific, expected and tested quality of a sign. It includes a settled belief about the expected values of the goods, in the minds of buyers. The Supreme Court pointed out that the reputed trade mark in relation to other signs is characterized by ever stronger distinctive characteristic. Numerical trade marks owned by Technopol and registered for crosswords periodicals do not have the distinctive character. Trade marks intended to use for such periodicals have informational nature and are descriptive. They demonstrate direct and specific relationship with goods at stake which could allow its buyers to see them as a description of quantity of goods or one of their essential characteristics. In any case, a numerical trade mark placed on the cover of the magazine informs about the amount of crosswords that are appearing in the magazine and it is seen by buyers as a description of the characteristics of the goods, in particular the number of crosswords appearing in the magazine. Similarly, the word signs “panorama” or “panoramas” are used to describe the features of crosswords printed in a journal. The weak distinctive characteristic of Technopol’s trade marks that were registered for crosswords periodicals proves that these are not reputed trade marks, and there is no risk of confusion as referred to in article 296(2)(ii) of the IPL.

There was no evidence for the Court, that Technopol’s trade marks acquired the secondary meaning. On the contrary, such arguments were denied by the Court because of the use of these trade marks in such a way that they became a carrier of information about the origin of the goods. The Court confirmed that, as a general rule, it is possible for a trade mark that also serves as a press title, to acquire secondary meaning and distinctive character while performing informational function, but only taking into account all the circumstances the of use of such sign for designation of the goods.

The Court also ruled that the risk of consumers confusion as to the origin of goods, which creates the infringement of the right of protection for a trade mark, has many factors that require a comprehensive examination. The degree of knowledge of the registered trade mark, the degree of similarity between trade marks and the goods, and the circumstances in which the marked goods are sold, but also its distinctiveness should be taken into account while determining the risk of consumers confusion. According to the Court, the risk of consumers confusion was excluded because of the weak distinctive characteristic of the descriptive numerical signs, and the allegations of violation of article 296(2)(ii) of the IPL were unfounded, irrespective of any similarity between Phoenix Press and Technopol’s trade marks. Article 296(2)(ii) of the IPL applies to the infringement performed in the form of imitation, which may involve the use of an identical or similar trade mark to a trade mark registered, for the same or similar goods to these listed in the registry. The premise of violation is not only the unlawful use of a sign, but also the risk of confusion as to the origin of goods. The common knowledge of Technopol’s trade marks has not been proved and such knowledge cannot be equated with the popularity, especially as these trade mark serve for the designation of crosswords magazines that are targeted to specific audiences.

The Supreme Court also ruled that there was no violations of the provisions of the CUC related to the likelihood of consumers confusion as to the origin of the goods. The condition for the application of article. 10(1) of the CUC is decided on the factual basis. As it was noted by the Supreme Court in a judgment of 23 April 2008, case file III CSK 377/07, published in OSNC 2009/6/88, the difficulties in establishing such datum stem from the situation that it’s a fact of a legal nature and which may arise, as well as the fact that the likelihood of confusion must relate to a specific model of the consumer. According to article 10(1) of the CUC, the indication of the goods or services must have such a distinctive character so it’s illegal use would cause the likelihood of consumers confusion as to the origin of the goods. Only the use of words and numbers in a specific composition could cause such a risk. A similar opinion was issued by the Supreme Court in a judgment of 21 February 2008, recognizing that the numerical designation placed on the cover of the crosswords magazine can make the average consumer confused as to the origin of the goods, only if it is put in the place usually reserved for the title of a periodical. There was also the need for an appropriate balance between the rights and interests of different market participants, so giving due protection would not allowed to abuse their position.

The Supreme Court also noted that Technopol wrongly raised the plea of faulty decision of a case where it argued that the lower court did not take into account its claim against the defendants to withdraw given trade mark applications from the Polish Patent Office and the claim to abandon of their trademarks rights. The Court ruled that these claims relate to the rights on the existence of which decides an independent body – the Polish Patent Office. It is the PPO’s jurisdiction to decide on the invalidation of the right of protection for a trade mark at the request of any person who has a legitimate interest if it’s shown that the statutory conditions for obtaining this right have not been met.

For all these reasons, the Supreme Court dismissed the cassation complaint brought by Technopol.

Trade mark law, case II GSK 214/09

March 3rd, 2010, Tomasz Rychlicki

This is a continuation of the story described in a post entitled “Trade mark law, VI SA/Wa 1000/08“. Les Laboratoires Servier from France filed a cassation complaint. The Supreme Administrative Court in a judgment of 16 December 2009, case file II GSK 214/09, ruled that the sign GLAZIDE is representing a creative transformation of the name of an active ingredient (AI) called gliclazidium (gliclazide) that was proposed by the WHO. GLAZIDE has the distinctive character because it is a fanciful sign and it does not constitute either a name of a generic product, or the International Nonproprietary Name of the active substance of the Latin Gliclazidum (English: Gliklazide, Polish: Gliklazyd), nor does it directly inform about the characteristics (properties) of goods. Therefore, the SAC rejected the complaint.

Pharmaceutical trade marks, case VI SA/Wa 844/09 – GESTROL is not always similar to GESTROLTEX

February 2nd, 2010, Tomasz Rychlicki

On 4 February 2004, the Polish company Przedsiębiorstwo Farmaceutyczne LEK-AM Sp. z o.o. from Zakroczym filed to the Polish Patent Office (PPO) a trademark application for word sign GESTROL Z-275787 for the goods in class 5, cancer drugs. In a decision of 11 April 2008 the PPO refused to grant the right of protection. The PPO found that GESTROL is similar to the earlier registered trade mark (with priority date of 6 February 2003) – GESTROLTEX R-192945 registered for BIOTON S.A. from Warsaw, for goods in class 5, pharmaceutical preparations. Article 132(2)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, served as the basis for the decision to refuse to grant a right of protection.

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

LEK-AM filed a request for re-examination of the matter. The company argued that the sign applied for is intended to mark the anticancer drug. The active substance in this preparation is a chemical compound of the generic name (INN) megestrol. Under the decision of the Polish Minister of Health, GESTROL as a medicinal product received authorization for marketing. The Minister of Health has not found confusing similarity between GESTROL and GESTROLTEX. LEK-AM pointed out that both trade marks will be identified in the course of the highly specialized medical personnel. The PPO rejected the request and LEK-AM filed a complaint before the Voivodeship Administrative Court (VAC) in Warsaw.

The Court in a judgment of 12 October 2009, case file VI SA/Wa 844/09, ruled that the recipient, to whom the association between the marks GESTROL and GESTROLTEX may arise, is not only a person who is reasonably well informed and reasonably observant and circumspect, but it is also a person with high qualifications. Anticancer drugs are not bought and ordained without the intermediary of a doctor. For this reason, evaluation of other state administrative body, namely the Office for Registration of Medicinal Products, Medical Devices and Biocides and it is the ORMP who sets procedures and requirements for registration of signs for medicinal products, must be considered not only as a medical evaluation of the effects of the medication but also as the situation where the ORMP does not allow for the existence of two medicinal products with the same or similar name, which would prevent the identification of the product and the source of its origin at the medicinal products market. Of course, the court agreed with the PPO’s argument that the registration of the name of the medicinal product in the Office for Registration of Medicinal Products, Medical Devices and Biocidal Products at the Ministry of Health does not create an individual right to a specific drug name. Such a right exists from the time the right of protection for trademark is granted the IPL. It was obvious that the trade mark examination/registration proceedings before the PPO are independent of the proceedings before the ORMP, but it must be borne in mind that the earlier findings of one of the official bodies of Polish state cannot be neglected by another official body.

The VAC came to the conclusion that the contested decision of the PPO did not comply with the requirements of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments. According to article 107 §3 of the APC, the reasons for the administrative decision should include in particular: facts that the PPO considered proven, the evidence on which it relied and the reasons why the credibility of other evidence were denied the probative value, and the legal justification for the decision should be explain the legal basis for the decision, quoting the law. The VAC held the Polish Patent Office has not give sufficient reasons for, why it has refused to grant protection for a GESTROL trade mark.

The VAC annulled both contested decisions, and ruled them unenforceable. This judgment is not yet final. The party unsatisfied with the ruling may file a cassation complaint to the Supreme Administrative Court.

See also my posts entitled “Polish regulations on pharmaceutical trade marks” and “Polish case law on advertising of pharmaceuticals“.

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

September 9th, 2009, Tomasz Rychlicki

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

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

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

(…)

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

Technopol argued that 1000 Jolek was similar to a series of crosswords periodicals which include magazines marked by a noticeable number in conjunction with the word “panoramic” (in Polish: panoramiczny), i.e. trade marks such as 100 PANORAMICZNYCH R-109471, 200 PANORAMICZNYCH R-105389, or 1000 PANORAM R-126399.

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

PRESS-MEDIA argued that the disputed trade mark is descriptive in its phonetic aspect, since the number “1000″ combined with the word “Jolek (which defines the type of crossword) causes the trade mark to lack concrete distinctive character. Crucial for the distinctive character of the disputed trade mark is its graphics consisting of the maroon background, the composition of the number 1000 and “Jolek” which are written in fanciful font. PRESS-MEDIA also argued that digits (numbers) only, as well as numbers with words such as “crosswords”, “panoramic”, “panorama”, “sudoku” are purely informational signs with regard to journals with crosswords and other logical exercises. These signs inform of the quantity and/or types of logical exercises/crosswords available in a magazine/publication. PRESS-MEDIA also mentioned that OHIM has repeatedly refused to grant to Technopol trade mark registrations for numbers as trade marks for goods in class 16. See trade marks such as: 150 CTM 00466549, 250 CTM 004665592, 350 CTM 004665601, 222 CTM 004665618, 333 CTM 004665683, 555 CTM 004665709 and trade marks such as 100 SUDOKU CTM 004635711 and 200 SUDOKU CTM 004635736.

In its decision of April 2009, the PPO rejected Technopol’s oppostion. The company filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw.

The VAC in its judgment of 23 February 2009, case file VI SA/Wa 2135/08 ruled that the protection of a press title which is also a trade mark for a crossword magazine does not exclude the possibility of obtaining the right of protection by another entrepreneur for the press title containing the same elements (numbers), if these signs can be easily distinguished in the trade. The provisions included in article 132(4) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, permit a convergence of these elements, which on the press-market are in a common use, which also excludes the possibility of monopolisation of the use of such phrases.

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

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

What is more interesting the Polish court acknowledged that this rule is also reflected in the foreign case-law concerning conflicts of trade marks and press titles and pointed out to two judgments of the German Bundesgerichtshof of 1 March 2001, case act signatures I ZR 211/98 and I ZR 205/98, that concerned TAGESSCHAU and TEGESBILD trade marks and TAGESSCHAU and TAGESREPORT trade marks, (AfP of 2001 r., no 5, pp. 385, 389).

The judgment is not final and a cassation complaint has been filed.

Trade mark law, case VI SA/Wa 401/08

September 8th, 2009, Tomasz Rychlicki

On 23 March 2002, “Sery ICC” Company from Paslek applied for trade mark protection for a form of plain package Z-248526 that preserves the cheese, in classes 2, 29 and 40 for goods such as dietary food for therapeutic purposes, baby food, milk and milk products, cheese, butter, margarine, milk processing and product cheeses.

Z-248526

The Polish Patent Office (PPO) acknowledged that such packaging is not suitable to distinguish any goods of one undertaking from the another, especially yellow cheese. According to the PPO, a shape of the package in the form of a rectangle, with slightly rounded sides in black, is nothing special in the cheese industry. The PPO noted that such packages are available on the Belgian market and refused to grant protection for the 3D sign. The Polish Patent Office has ruled on lack of distinctiveness. According to the PPO, a plain shape of the package in black, without any additional elements will not help the average consumer to identify a product with a particular manufacturer, or in particular, with a company with Paslek. “Sery ICC” has also applied for another 3D mark – black packaging with a label “Ser Staropolski” and the protection right was granted by the PPO, R-166989.

R-166989

The PPO reiterated that a sign must be assessed in its entirety (the shape and color) and ICC’s first application did not meet the requirements of distinctiveness which also means that it has not any distinguishing characteristics and it cannot be used to indicate the origin of the goods properly.

“Sery ICC” appealed against the PPO’s decision. The Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 30 July 2008, case file VI SA/Wa 401/08 has noted serious errors in the decision and ruled it void. In the application proceedings before the PPO in the case of refusal to grant the protection right, an applicant may request a re-hearing of the matter by the PPO. And the second decision may be appealed before the VAC. In accordance with article 245(1) 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 Office must decide whether to grant protection or to refuse to do so. This is the most important and missing part in the contested decision. The VAC did not assess whether such a mark can obtain protection or not. Once the judgment is final and binding, the case will return to the Polish Patent Office for re-hearing.

Trade mark law, case II GSK 905/08

July 28th, 2009, Tomasz Rychlicki

On June 2006, the Polish Patent Office refused to grant the right of protection for a 3D trade mark Z-255004, that was applied for in September 2002 by Polish company “BARTEX – Bartol” Spólka jawna from Paproc. The reason was that the applied sign was similar to 3D trade mark IR-676508, registered under the Madrid Agreement with a priority of April 1997 for Bacardi & Company Limited for goods in class 33, such as alcoholic beverages.

Z-255004

In October 2007, after re-hearing the case, the PPO upheld its decision of June 2006 on the grounds that the assessment of similarity between both signs should be based on the overall impression both marks have on the consumer.

According to the PPO the distinguishing strength of the disputed signs should be taken into account, including its distinctive and dominant components. As usual, both trade marks should be compared in three aspects: visual, aural and conceptual. The PPO deemed both marks as “weak trade marks”. However, the PPO also noted that the 3D trade mark owned by Baccardi posses some features that are not common and are not reproduced in other 3D forms of bottles. The most distinctive element is the characteristic cut on both sides of the bottle. Along with all the rest it gives a unique shape to the bottle. Thus, in the assessment made by the PPO, the earlier trade mark as a whole had the distinctive character which allowed the PPO to issue a positive decision on the recognition on the territory of the Republic of Poland of the protection for the international trademark.

IR-676508

While deciding on the application made by the Polish Company, the PPO came to the conclusion that the differences between disputed trade marks are not so noticeable and the risk of confusion by the average consumer of such goods is significant.

As regards the Polish company’s argument that it should be taken into account the fact that alcohol is almost always sold in the bottle that has a label, the PPO said that it is possible to imagine a situation that the applied trade mark will have in the future a label which is an imitation of an earlier trade mark. The Polish Patent Ooffice pointed out that, if looked at the specific conditions of trade it should take into account the way in which the applicant puts its goods on the market. Some information regarding this issue were presented in the observations filed by Bacardi on 26 August 2003 as to the existence of grounds that may cause a right of protection to be denied in connection with the application Z-255004. These materials proved that the Polish company markets products that are the imitation of alcohol produced Baccardi.

BARTEX – Bartol filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in its judgment of 28 April 2008, case file VI SA/Wa 126/08 ruled that while deciding whether the right of protection may be granted it must be determined whether a sign may serve as a trade mark at all. Only after having determined that a sign may be a trade mark it shall be examined whether such sign has sufficiently distinctive characteristics, to check out whether a sign is capable to distinguish on the market the specific goods for which it was applied for.

The VAC based its holding on article 129(1)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments.

Article 129
1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

The lack of distinctive character is an absolute obstacle to trade mark registration, however, characters devoid of this charateristics can acquire it as a result of use. The distinctive character of a trade mark is fitted with such features, which in the minds of consumers it clearly indicate that the goods identified by it come from the specific company. The court cited doctrinal approach to the distinctiveness of a trade mark (a book by professor Urszula Prominska entitled Prawo wlasnosci przemyslowej published by Difin, Warszawa 2005, edt. II, p. 211). The assessment of a distinctive character is the result of two quite different elements. On the one hand, the way/form a trade mark is presented must be “itself” so distinctive that it can identify the goods. On the other hand, it must provide the consumer with a possibility to choose goods based on that way/form without the necessity of determining the origin of goods indirectly (eg. when the consumer is forced to look at the product manufacturer’s name). In examining signs that cannot distinguish the goods, it should be noted that such sign does not posses any characteristics in its tructure thus such sign as a whole is devoid of a sufficient distinctive characteristics and it is not suitable for the identification of goods, and therefore is does not have the ability to distinguish its origin. This is a category of signs that emerged of its structural features (such as a form which is the representation of the product, its generic name, etc.). The court rejected the complaint.

The cassation complaint was rejected in the judgment of the Supreme Administrative Court of 13 May 2009, case file II GSK 905/08.

Trade mark law, case VI SA/Wa 1486/08

June 17th, 2009, Tomasz Rychlicki

On 17 February 2005 Société des Produits Nestlé S.A. from Vevey applied to the Polish Patent Office to register the word-figurative trade mark Frappé Z-291280 for goods in class 30. On August 2005 Nestlé filed a request for invalidation of the right of protection of the FRAPPE R-13842 trade mark, registered for goods in class 30 and 32 owned by Polish company “MASPEX” Spólka z o.o. form Wadowice. Nestlé based its request on provisions of article 7(2) and article 8(3) 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.

(2) A sign shall not possess sufficient distinctiveness if it simply constitutes the 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

(…)

Article 8(3)
A trade mark shall not be registrable if:
iii) it contains incorrect statements;

Nestlé argued that the word “frappe” is a generic term, widely used in trade, as a sign for chilled coffee beverages. The company based its legitimate interest to have standing in proceedings before the Polish Patent Office on the principle of freedom of access to the indications that have descriptive meaning. In addition, Nestlé informed the PPO that it had sent a warning letter to Maspex because the Polish company had introduced to the market a product with similar name. In Nestlé’s opinion the exclusive right granted to Maspex to mark its products with the word “frappe” was a “unlawful constitutional restriction”.

After the hearings and careful analysis of the evidence provided by both parties, the PPO found that the word FRAPPE (even being foreign word) was a term used widely to describe the properties of a beverage (cold, frozen, with ice cubes), especially of coffee, or to determine the type of coffee and it could not serve as sign capable of distinguishing goods of one entrepreneur from goods of another entrepreneur in normal market conditions. The PPO also shared Nestlé’s position based on the article 8(3) of the TMA that the wide range of names of goods covered in the registration of the contested trade mark are not frappe. Maspex filed a complaint. The Voivodeship Administrative Cout (VAC) in Warsaw in its judgment of 12 October 2008, case file VI SA/Wa 1486/08, fully agreed with the PPO’s decision and rejected the complaint.

Trade mark law, VI SA/Wa 1000/08

February 5th, 2009, Tomasz Rychlicki

In the article entitled “Marka jest dla konkretnego farmaceutyku“, the Polish newspaper Rzeczpospolita reports a recent judgment of the Voivodeship Administrative Court (VAC) in Warsaw, case file VI SA/Wa 1000/08. On 29 September 2001, Farmaceutyczna Spółdzielnia Prac Galena from Wroclaw applied for trade mark registration for the word Glazide in class 5 for goods such as anti-diabetic pharmaceutical preparations. The Polish Patent Office (PPO) registered this sign (R-161144) in the decision of 4 February 2005.

Les Laboratoires Servier from France filed a request for invalidation of the right of protection based on articles 129(1)(ii) and 129(2)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments.

Article 129(1)(ii)
1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

(…)

Article 129(2)(ii)
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods.

The French company claimed that the mark Glazide could not distinguish the goods for which it was registered. The mark itself presents information about the treatment of diabetes. The active ingredient (AI) in these kinds of medicine is the substance called gliclazidium (gliclazide). However, the PPO dismissed the request and the French company lodged a complaint before the District Administrative Court in Warsaw. That court held that the disputed mark may lead its recipients (doctors, pharmacists) to make some association with the AI, but it does not mean that it lacks the distinctive character. The sign differs from the AI in phonetic and visual aspects. According to the Court, the Glazide trade mark is fanciful and does not describe a type of drug. The VAC ruled that article 129(2)(ii) clearly states that only signs that are made exclusively of the elements that describe the nature or origin of goods lack distinctive character.

The judgment is not yet final. The cassation complaint was filed before the Supreme Administrative Court. See ‘Trade mark law, case II GSK 214/09“.

Trade mark law, cases Sp. 428/07 and Sp. 442 /07

September 6th, 2008, Tomasz Rychlicki

The Polish newspaper Rzeczpospolita reports recent cases (act signatures Sp. 428/07 and Sp. 442 /07) brought before the Polish Patent Office by German company Klöckner Moeller GmbH, which opposed the registration of the PowerControl trade mark by the Lestar Company from Opacz. Both parties are involved into a dispute as to whether the PowerControl mark is a sign of fanciful character and whether it has sufficient ability to distinguish the goods of one undertaking from the another.

The Polish company from Opacz applied for a trade mark registration for PowerControl in 2001, in class 9 (cables and electrical wires, electrical controls of light, signals and switching and in class 35 (sale of various goods in a shop with wiring articles). The PPO has issued a favourable decision and registered this trade mark in 2006, R-174685.

R-174685

The patent attorney who is representing the company from Germany declared that one can not claim such simple words (power and control) as a trade mark, it gives the owner a monopoly on the use. The sign creates a cluster of words whose meaning is known in Poland. There are thus distinctive capabilities which are required for a brand. And it must identify the goods of an entrepreneur. But the Polish company argued that a sign which is composed of foreign words can be considered fanciful in Poland. Therefore PowerControl is able to distinguish goods, especially technical equipment.

The Polish Patent Office has not yet resolved the dispute.

Trade mark law, VI SA/Wa 1962/07

July 6th, 2008, Tomasz Rychlicki

The Polish company Zakład Gospodarki Komunalnej Organizacja Odzysku Biosystem S.A. requested the Polish Patent Office to take a decision on the lapse of the right of protection for IR-653449 and IR-585713 trade marks registered for goods in the following classes 1, 2, 3, 5, 6, 7, 8, 9, 11, 16, 20, 21, 24, 25, 29, 30, 32, 34, 35, 36, 39, 40, 42. Both trade marks are owned by Der Grüne Punkt Duales System Deutschland GmbH.

IR-653449

In support of its legal interest Biosystem S.A. explained that it is one of more than 30 domestic companies, specializing in recovery of certain categories of waste and like other market participants have the right to use the informational signs. While Rekpol S.A., being the sole licensee of Der Grüne Punkt Duales System Deutschland GmbH trade marks, is sending C&D letters to different businesses, including Biosystem S.A. According to Biosystem the questioned trade marks are spreaded and used among various companies and as the result of negligence of the owner and licensee these signs cannot fullfill the functions to designate the origin of a particular entrepreneur and have degenerated in respect of all goods and services and become a carrier of information in trade that the product bearing the mark shall be recovered.

The PPO decided that the Polish company has no legal interest (but only factual one) in all classes of goods since it produces none of the goods covered by the protection right (and it doesn’t not sell them), but only provides services related to recovery of certain categories of waste.

The PPO only agreed that Biosystem S.A. has shown legal interest in seeking the lapse of the disputed trade mark registration in part, on all services (i.e., services included in classes 35, 36, 39, 40, 42). In this respect, the PPO considered that the interest can be inferred from the principle of freedom of establishment guaranteed by article 20 of the Constitution and Article. 6 of the Act of 2 July 2004 on freedom of economic activity.

Biosystem appealed. The Voivodeship Administrative Court in its judgments of 15 April 2010 case file VI SA/Wa 1959 and VI SA/Wa 1960/07 held that the definition of waste and recycling, shows that waste are the goods. Thus, in the view of the court it was possible to trade in such goods. The court held that it may be that the scope of activities of Biosystem S.A. include those goods. Hence the need to examine the legal interest in the classes of goods. Legal interest shall be tested at the begining of hearings, therefore, the VAC did not address the merits of the dispute. The Court ruled that the repealed decisions of the Polish Patent Office shall not be enforceable.

The VAC decided on other PPO’s decisions on IR-585714 and IR-653450 trade marks and held the same in its judgments of 24 April 2008 case file VI SA/Wa 1961/07 and VI SA/Wa 1962/07.

Trade mark law, case II GSK 185/08

June 23rd, 2008, Tomasz Rychlicki

Przedsiebiorstwo Przemyslu Spirytusowego Polmos in Warszawa objected to the trade mark application for SPIRYTUS REKTYFIKOWANY PL 1784, R-134685, filed by POLMOS LANCUT SA. Polmos in Warszawa claimed priority of an earlier trade mark – SPIRYTUS REKTYFIKOWANY, R-63628.

R-63628

SPIRYTUS REKTYFIKOWANY was bought by Polmos in Warsaw during an auction held by the Polish Ministry of the Treasury. All Polmos companies agreed in 1999 that they would not use trade marks owned by others in the Polmos “group”.

The Polish Patent Office (the PPO) decided that the contested mark had no distinctive character and it only indicated a specific kind of alcohol and method of production. Przedsiebiorstwo Przemyslu Spirytusowego Polmos in Warszawa lodged a complaint before the District Administrative Court in Warsaw seeking to annul the PPO’s decision. However, the Court sided with the PPO’s findings and rejected the complaint. The Court held that both signs were word-figurative marks and should be perceived and examined as whole.

R-134685

Polmos in Warszawa filed a cassation complaint before the Supreme Administrative Court in Warsaw. It supported its position with an argument that SPIRYTUS REKTYFIKOWANY acquired secondary meaning and had a good reputation bacause of the use during the course of trade. The Supreme Administrative Court in its judgment of 18 June 2008, case file II GSK 185/08 did not agree with such statements and rejected the complaint. The Court found that Polmos in Warszawa was seeking exclusive rights in the spirytus rektyfikowany sign, which was a purely informative term to be found in Polish dictionaries and official norms.

This case is the leading example of problems with trade mark portfolios of companies that were privatized in Poland after 1990. Polmos was state-owned monopoly, controlling the Polish market of spirits and other alcohols from middle ’20s until 1990, when it was divided and privatized into several independent companies.

Trade mark law, case VI SA/Wa 805/05

June 3rd, 2008, Tomasz Rychlicki

Today, I read an old article available at www.nytimes.com website (January 2007) about Levi’s actions connected with protection of a trade mark consisting of a design for pant’s pockets and I immediately recalled myself a judgment of the Voivodeship Court in Warsaw of 22 February 2006, case file VI SA/Wa 805/05.

Contrasted trade marks that are meant as signs for clothes (among other things for pants) resemble to each other to the extent that it may lead into the confusion of a consumer as regard to origin of goods in the regular course of trade (as defined in the article 9 sec. 1 pt 1 and pt 2 of the Act of 31 January 1985 on Trade marks, Journal of Laws (Dziennik Ustaw) No 5, item 17 with later amendments) if both marks include horizontal seams crossing down the pocket which in its shapes reasemble seagull’s (eagle) wings and where such element is simultaneously predominant for both signs.

US TM 1139254

Trade mark law, case II GSK 236/07

February 11th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 28 November 2007, case file II GSK 236/07 held that the distinctive character of a trade mark may orginally arise from the nature of a sign or may later originate from the use of such trade mark on the market (acquired distinctiveness). A sign acquires the secondary meaning, if it lacked the distinctive character earlier, but during the use it became the source of information about the origin of a product.