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Archive for: distinctive character

Trade mark law, case Sp. 304/05

September 26th, 2008, Tomasz Rychlicki

Eniro Polska applied for trade mark protection for PANORAMA FIRM in classes 16, 35 and 41 for goods and services such as telephone and address books, providing services to third parties concerning the promotion of goods and services, publishing services, assistance to third parties in the publishing business. The Polish Patent Office issued its decision on 6 September 1994 and granted the protection right, R-81181.

Panorama Firm-Marek Stefaniak from Sopot filed a request for invalidation of the right of protection for the PANORAMA FIRM mark, claiming that this sign had lost its distinctive character. The company from Sopot based its arguments on provisions of Article 169(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 subsequent amendments.

1. The right of protection for a trademark shall also lapse:
(ii) on loss by the trademark of distinctive features for the reason that in consequence of the owner’s acting or negligence it has become, in the course of trade, a customary mark consisting exclusively of elements which may serve, in the course of trade, for indicating, in particular, the kind, quality, quantity, price, intended purpose of the good, the process, time or place of its manufacturing, the composition, function or usability of the good, in respect of the goods for which the trademark has been registered,
Both conditions must appear together, which means that the sign has to lose its distinctiveness and that the trade mark owner contributed to such process.

The Polish Patent Office, in its recent decision of 18 August 2008, act signature Sp. 304/05, rejected Panorama Firm-Marek Stefaniak’s request and ruled that Eniro Polska had proved that PANORAMA FIRM trade mark was in intensive use and that it was also broadly advertised and protected.

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

The Voivodeship Court in Warsaw in its judgment of 22 February 2006, case file VI SA/Wa 805/05 held that 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 subsequent amendments.

US TM 1139254

Such situation happened because both trade 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.

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.

Trade mark law, case V ACa 469/07

January 7th, 2008, Tomasz Rychlicki

The District Court in Częstochowa in its judgment case file V GC 83/04 and the Appellate Court in Katowice in its judgment case file V ACa 469/07 ruled that the name DELICJE (better known by English readers as Jaffa cakes is not distinctive. This holding ends the legal battle that was started by Lu Polska S.A. (owned by Kraft Food) against five other companies.

However, this judgment is not congruent with other courts’ decisions regarding the Delicje R-70513 trade mark. The District Court in Warsaw ruled on 27 march 2007 that the Tago Company, owned by Tadeusz Gołębiowski, which produces Delicje, Delicje Mazowieckie, Delicante and Fruktolicja cakes, infringed Lu Polska’s trade mark.

Trade mark law, case III CSK 300/06

October 17th, 2007, Tomasz Rychlicki

The Supreme Court in its judgment of 22 February 2007 case file III CSK 300/06, held that each sign should be presented in a graphical way. This is understood in the case law as a visual perceptibility of the trade mark, i.e., a sign must be possible to be seen, even if it’s only a word trade mark, which is represented by writing letters. This case concerned the infringement of MIXEŁKO R-116044 trade mark owned by ALMAR spółka z ograniczoną odpowiedzialnością spółka komandytowa from Kraków.

Trade mark law, case VI SA/Wa 227/07

September 15th, 2007, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 13 April 2007 case file VI SA/Wa 227/07 interpreted the provisions of Article 129(2)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods.

The Court ruled that Article 129(2)(ii) of the IPL, refers to purely descriptive signs, i.e., characters that the direct and sole function is to provide information about the goods and not on its origin. The distinctiveness of the mark is the fact that the sole and direct information is information which indicates the characteristic of the goods. These signs that may constitute a determination of such characteristics only in a way of indirect conclusion, do not have the descriptive nature. The promotional message of the sign never itself makes it non distinctive, as well as the unoriginal slogan does not decide by itself about the lack of its distinctiveness. This case concerned the registration proceedings of word trade mark “ZAKUPY U NAS WEJDĄ CI W KREW” R-219731 (in English: Shopping with us you will come in the blood) owned by Polish company RAMPEX K. Termin T. Termin Spółka Jawna from Tychy.

Trade mark law, case II GSK 247/06

August 11th, 2007, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 1705/05“. The Supreme Administrative Court in its judgment of 20 February 2007, case file II GSK 247/06, dismissed a cassation complaint brought by the K. Company. This judgment concerned TERRAVITA trade mark R-142204.

R-142204

The Court ruled that it cannot be assumed that in case of word-graphic signs, a word element of such sign has a decisive character because it is easy to remember and to communicate. While assessing the similarity of signs one has to take into the consideration a general impression which compared signs exert on the consumer. I’m still not so certain if this trade mark (trapezoid box/packaging for a bar of chocolate with characteristic rectangle “window” at the front which allows the consumer to see the texture of the chocolate) should be perceived as “trade dress” as it was discussed by the SCOTUS in its judgment in the case Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). Maybe it is a three-dimensional sign/trade mark (3D).

Internet domains and trade mark law, case I ACa 1228/05

June 14th, 2007, Tomasz Rychlicki

The Appellate Court in Poznań in its judgment of 26 April 2006, case file I ACa 1228/05, published in electronic database LEX no. 214296, ruled that in the case of a trade mark in the form of a particular word, the word representing a sign it is important, so long as it has the distinctive character and it is possible to distinguish the goods supplied or manufactured by a company from the products of another company. The appearance of a sign that may be represented by letters written in different fonts was less important in the described case. The conclusion that the only the graphic/figurative similarity between the two marks would give a plaintiff the right to assert claims arising out from article 296 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, would render the protection resulting from this provision purely illusory and would wreck the sense of norms arising from this article.

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.

3. The claims referred to in paragraph (1) shall also be enforceable against a person who only puts on the market the goods already bearing that trademark, provided that the goods do not originate from the right holder or from a party authorised by him to use the trademark.

4. When invoking the right of protection conferred by his trademark, the licensor may enforce the claims referred to in paragraph (1) against a licensee who breaches any provision in his licensing contract with regard to its duration and territory covered by the contract, the form covered by the contract in which the trademark may be used, as well as the scope of the goods for which the trademark may be used or the quality of the goods. This shall apply accordingly to the sub-license.

5. A holder of a right of protection for a trademark may enforce the claims referred to in paragraph (1) against a licensee or a sub-licensee in case where the provisions of the sub-license contract, referred to in paragraph (4) have been breached, as well as in the case, where the contract has been concluded in breach of Article 163(2).

The Court also held that the registration of a web site under a given domain name address, and conducting a business activity through, and also its advertising, complete the condition of “trade mark use”.

See also “Polish case law on domain names“.

Trade mark law, case VI SA/Wa 693/06

January 24th, 2007, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 3 November 2006 case file VI SA/Wa 693/06 held that a dimensional trade mark (3D), which is an exact reproduction of the packaging is not distinctive, and thus cannot be registered.

IR-0405177

This case concerned the refusal to grant the right of protection for International trade mark IR-405177 owned by Ferrero, S.p. A. from Alba.

Trade mark law, case II GSK 210/06

December 29th, 2006, Tomasz Rychlicki

On 11 July 2000, the Polish Patent Office has granted the right of protection to Zakłady Farmaceutyczne Polfa-Łódź Spółka Akcyjna for word trade mark “calcium c” R-122184 for goods in Class 5 such as pharmaceutical products. On 25 May 2001, the PPO received a requested for the invalidation of “Calcium C” R-122184 trade mark. The applicant was arguing that the questioned sign does not have a distinctive character. According to the applicant, the term “calcium” and “c” represent information about the properties and composition of the product bearing the mark.

The PPO in its decision of 11 February 2005, invalidated the right of protection for “Calcium C” R-122184. The PPO claimed that the word of calcium derived from the Latin and has no distinctive character, i.e. it is an informational sign, which should be available to all entrpretanours performing economic activity. While referring to the possibility of acquisition of secondary meaning the PPO held that the owner did not provide any evidence on this circumstance. The PPO considered that the mere fact that the company made a substantial investments in product advertising, or show significant sales, does not constitute itself a secondary meaning. Polfa-Łódź filed a complaint against this decision

The Voivodeship Administrative Court in its judgment of 20 February 2006 case file VI SA/Wa 1730/05 upheld the decision of the PPO. The VAC agreed that “Calcium C” does not have distinctive character. The Court stated that the sign is devoid of any fanciful elements, purely informational – indicating that the product is a calcium with vitamin C. The VAC ruled that in the interest of manufacturers of the pharmaceutical products is the exclusion of such signs from the registration, otherwise one individual entrepreneur could monopolize the use of these signs and that would lead to serious and unjustified restrictions on the activities of other entrepreneurs. Polfa-Łódź filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 December 2006 case file II GSK 210/06 found the appeal well-founded. The SAC held that there was a breach of procedrual provisions because the VAC did not explain and did not consider the impact on the outcome of the case of studies of public opinion, indicating the market share of the disputed product labeled with “calcium c” trade mark and the size of the expenditures on the promotion and marketing. The VAC restricted itself to general statements. It was assumed that for obtaining a secondary meaning the products labeled with “calcium c” must be marketed and available to buyers (the actual use of the trade mark). There was no doubt that this condition for the product bearing “Calcium C” trade mark has been met. However, the SAC noted that is has to be remembered that a trade mark acquires distinctive character as a result of its use only when a sign is able to identify the goods as originating from a particular entrepreneur. Undoubtedly for the SAC the facts in this case were not examined in detail and exhaustive.The Court ruled that the administrative proceedings that concerns the invalidation of the right of protection does not exclude the duty of the administrative body (the PPO) to take all necessary steps to clarify the facts of a case and to resolve it and to comprehensively collect and examine all evidential material, although the burden of proof rests on the one who has the legal interest.

In the legal literature and case-law, it is considered that the typical descriptive signs are in fact components of the goods, even if the indication is only a basic (essential) component, for example, “sand” for the cosmetic agent, which is an essential component. The Court cited W. Włodarczyk, The distinctive ability of a trade mark, Lublin 2001, pp. 199-200. The informational character of a trade mark is not changed when someone is using a sign from foreign language, even in case of terms that come from a dead language (e.g. Latin), when it concerns the professional, or a part of the general Polish vocabulary. The Court concluded that in any case, it would not have been justified to say that the fact that a sign contains information about the composition of a product, a limine precludes its recognition as a fanciful and bars the opportunity to register it as a trade mark, especially since it is possible to acquire secondary meaning.

Trade mark law, case VI SA/Wa 1420/06

November 11th, 2006, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 31 October 2006, case file VI SA/Wa 1420/06 held that while examining whether the rights of protection may be granted, it should be determined whether a sign could serve as a trademark at all. Only after it was decided that a sign could be a trademark, one should examine whether a mark is sufficiently distinctive and therefore to check whether the sign is suitable for distinguishing the specific goods in trade, to designate of which it has been applied for. The lack of distinctive character of a trade mark is considered as the absolute grounds for refusal to trade mark registration, but a sign may acquire distinctive character as a result of use.

The Court found it difficult to say that red color combined with different kinds of equipment and tools, or accessories used in construction is something extraordinary, unique and unprecedented, which could stick decisively in the memory and let the consumer individualize the goods in the market among the goods of the same type but originating from different companies. This judgment concerned separate Color RED Pantone C32, IR-803195.

Trade mark law, case II GSK 115/06

October 29th, 2006, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 20 September 2006 case file II GSK 115/06 held that the surname or family name could serve as a trade mark that distinguishes the goods or services of a particular undertaking from goods or services of the same kind that originate from other entrepreneurs. However, in the present case, the owner of the trade mark KOZŁOWSKI R-115647, before he applied for registration of this sign, had the knowledge that for many years before registration of his trade mark, the Kozłowskis family have used their surname to designate products such as brushes and brooms. Pursuant to Article 7(1) of the TMA, as a trade mark may be registered only such a sign, that possess sufficient distinctiveness in normal economic activity. Therefore, the Voivodeship Administrative Court in its judgment of 7 December 2005 case file VI SA/Wa 905/05 properly found that, in the case described above, the purchaser of the goods would have considerable difficulty in identifying the source of origin of goods and reasonably assumed that the trade mark subject of this preceedings does not have a concrete distinctive character.

Trade mark law, case II GSK 377/05

October 6th, 2006, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for word-figurative trade mark OCETIX R-135047 based on provisions of Article 8(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 later amendments. The request was filed by the competitior of Szczęsna Ewa DELTA L.T.D, who claimed its prior rights to the company name (firm).

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;

Ewa Szczęsna filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 20 July 2005, case file VI SA/Wa 67/05 dissmissed the case. The VAC agreed with the PPO that the registration of the word-figurative trade mark OCETIX constituted the infringement of the firm of the competitor of Ewa Szczęsna, who established its undertaking in 1991. The Court ruled that the dominant element is the word OCETIX, it attracts the attention and has the distinctive character, while other elements are informative and are indicating the scope of the activities of Szczęsna Ewa DELTA L.T.D.

The Supreme Administrative Court in its judgment of 5 April 2006, case file II GSK 377/05 upheld the contested judgment and ruled that in accordance with Article 164 of the IPL, the right of protection for a trade mark may be invalidated at the request of any person who has legitimate interest. Article 315(3) of the IPL provides the principle according to which the registrability of signs registered or applied for the registration before 22 August 2001, is assessed on the basis of existing regulations. Thus, the law underlying the assessment of trade mark protection for OCETIX that was applied for the registration on 14 October 1998 are the provisions of the TMA.

R-135047

The SAC repeated that the right of protection for a trade mark is deemed as an exclusive, absolute, transferable and heritable property right. It’s a sign intended to distinguish the goods of one undertaking from those of the same type from another entrepreneur. A trade mark performs a distinctive, warranty and advertising functions. The Court noted also that in the course of trade, the category of distinctive signs, in addition to trade marks, are also brands/signs that are distinguishing of companies. The firm is one of such signs. It is the name under a which the registered merchant (general partnership, limited partnership, limited liability company, joint stock company) operates its undertaking. The firm of an undertaking distinguishes a given undertaking from other undertakings, in the same and/or other object/way of business. See R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 13 and 17.

The Court also ruled that the Paris Convention of 20 March 1883 on the Protection of Industrial Property published in Journal of Laws (Dziennik Ustaw) of 1975, No. 9, item. 51 and 52), introduced to the Polish law the term of the trade name, which previously was not used in the Polish legislation. The term collectively covers all the markings of companies enjoyed by the persons mentioned in Articles 2 and 3 of the Convention. The SAC agreed that Article 8 of the Convention does not constitute an independent basis to protect the trade name of the entrepreneur, because it does not specify conditions for such protection and does not indicate what claims should be used in the case of infringement of the rights to the company name. However, this affect the domestic law. See also “Trade mark law, case II SA 2914/01“. The Court ruled that the firm is protected under the Article 37 Code of Commerce (it was repealed by the Code of Commercial Companies later on) and Article 43 of the Civil Code. According to Article 37 of the Code of Commerce, the protection of the firm arises upon its entry into the commercial register, and will expire on the date a court order to withdraw its registration from the register comes into force. The infringement of the firm occurs if there is unlawful use by unauthorized person of a sign which does not distinguish definitively from the firm in a given locality (Article 37 in connection with Article. 35 of the Code of Commerce). Pursuant to Article 43 of the Civil Code, the firm is subject to the protection provided for personal rights/interests (Articles 23 and 24 kc). This protection arises from the date of the first use of a firm in business.

Trade mark law, case II GSK 64/06

August 10th, 2006, Tomasz Rychlicki

IMPERIAL TOBACCO POLSKA Spółka Akcyjna the owner of “M MOCNE” R-68755 trade mark filed a request for invalidation of the right of protection for “AS MOCNY t” R-139925 registered for Zakłady Tytoniowe w Lublinie Spółka Akcyjna.

R-139925

The Supreme Administrative Court in its judgment of 25 May 2006 case file II GSK 64/06 held that the word “mocne” (in English: strong) itself that is used as an indication of cigarettes, has not sufficient distinctive chracter as a trade mark. It may appear as part of a trade mark, but on a distinctive characteristic of a trade mark, which includes the word “mocne”, will decide other words or images and the word “mocne” will remain purely informational sign that could not become distinctive through use as a trade mark, even in a long term.

R-68755

The SAC held that all manufacturers of cigarettes have the right to use purely informational sign to indicate the quality of cigarettes sold.

Trade mark law, case II GSK 349/05

March 23rd, 2006, Tomasz Rychlicki

Imperial Tobacco requested the Polish Patent Office to invalidate the right of protection for “KIERY A K D mocne” R-131390 registered for GALLAHER POLSKA Sp.z o.o., for goods in Class 34 such as cigarettes.

R-131390

Imperial Tobacco is the owner of the right of protection for “M mocne” R-68755 trade mark registered for goods in Clss 34 such as cigarettes. The PPO dismissed the request and explained that the Trade Marks Act contains no provisions on the so-called disclamation rule which is based on identifying which elements that are part of a registered trade mark should not be protected and deemed as informational sings/elements. The word “mocne” (in English: “strong”) refers to the characteristics (properties) of cigarettes, which is associated with the fact that strong cigarette contains more tar and nicotine than light cigarette. The M-Mocne brand due to the presence in the market for several decades acquired the status of well-known trade mark among smokers, which according to the assesment of the Polish Patent Office does not change the fact that “mocne” sign is deemed as the informational term. Imperial Tobacco filed a complaint against this decision.

The Voivodeship Administrative court in warsaw in its judgment of 20 January 2005 case file VI SA/Wa 333/04 agreed with the PPO and dismissed the complaint. The VAC held that it is wrong assumption that the use of the registered word-figurative trade mark “M mocne”, resulted in obtaining the status of well-known trade mark of one of its elements, i.e. “mocne” word. Imperial Tobacco filed a cassation complaint.

The Supreme Administrative Court in its judgment of 26 January 2006 case file II GSK 349/05 held that the word “mocne” lacks sufficient distinctiveness. Therefore, the right to use this term (as well as “lekkie”) have all manufacturers of tobacco/cigarettes. This does not affect the personal or property rights, because the word is not property. Moreover, the Court noted the term “mocne” can never acquire distinctive character and all the time should be considered as an informational indication.

Trade mark law, case II GSK 167/06

March 11th, 2006, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 24 February 2006 case file VI SA/Wa 1946/05 held that the term mentioned in article 31 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, is a term of substantive law and shall not be shortened or extended.

Article 31
The request for annulment of a right deriving from registration of a trademark 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 registration in bad faith.

The VAC also ruled that bad faith mentioned in article 31 of the TMA, cannot be treated extensively in relation to all grounds for invalidation of the registration, because this would undermine the sense of the institutions of mutability of the registration. The Supreme Administrative Court in its judgment of 5 December 2006 case file II GSK 167/06 dismissed the cassation complaint. This case concerned DELIC-POL R-81280 trade mark.

Trade mark law, case II GSK 65/05

October 17th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 8 June 2005 case file II GSK 65/05, held that it is accepted in the case law that the sufficient distinctiveness of a trade mark should be examined in concreto and not in abstracto. This means also that the sign must relate to the specific goods listed in the application form. The Court ruled that informational and descriptive character of the sign is a characteristic that demonstrates the lack of concrete, not the abstract distinctive character of a sign. This case concerned the examination proceedings of “supermarket” Z-197930 applied for by AGORA S.A.