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Archive for: genuine use

Trade mark law, case II GSK 1500/12

January 31st, 2014, Tomasz Rychlicki

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

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

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

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

Trade mark law, VI SA/Wa 1962/07

January 22nd, 2013, 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-653450

In support of its legal interest, Biosystem S.A. explained that it is one of more than 30 domestic companies that are 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 spread and used among various companies and as the result of negligence of the owner and licensee these signs cannot fulfill 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.

IR-653449

The PPO decided that the Polish company had 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 in the provisions of Article 20 of the Polish Constitution and Article 6 of the Act of 2 July 2004 on Freedom of Economic Activity. Biosystem filed a complaint against this decision.

The Voivodeship Administrative Court in its judgments of 15 April 2008 case file VI SA/Wa 1959/07 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 beginning 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 should not be enforceable.

The Voivodeship Administrative Court has also decided on other PPO’s decisions with regard to 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. All four cases went back to the Polish Patent Office.

Again, Biosystem argued that the characters have lost their distinctiveness, as they appear on millions of packages of goods from various manufacturers. The company cited a research institute Pentor that consumers do not identify these signs with a particular trader. They are applied by different manufacturers for packaging and currently only indicate that they are subject to disposal (safe for the environment). Biosystem claimed that information as such cannot serve as trade mark and the sign does not identify an entrepreneur.

Der Grüne Punkt-Duales System Deutschland and Rekopol noted that they were active in defending these trade marks against the lapse, because both companies warned many entrepreneurs, that Grüne Punkt trade marks cannot be used without a proper license. In this way, both companies care about the protection of the brand which excludes the possibility of the lapse due to lack of distinctive character. The Polish Industrial Property Law clearly states that the loss of the distinctive character must be the consequence of the owner’s acting or negligence.

The Adjudicative Board of the PPO in its decisions of July 2010 case no. Sp. 363/08 and case no. Sp. 433/08 and ruled on the lapse of the right of protection. The PPO agreed with the argument that Grüne Punkt trade marks became very popular in many markets, especially in Europe. According to the case file, there are around 95,000 licenses granted all over the world for their use, and for example, in Western Europe, they are placed on almost 91% of the packaging. Such method of placing trade marks on a variety of products that originate from different manufacturers does not meet the conditions of the genuine use of the mark in its function.

The Voivodeship Administrative Court in Warsaw in its two judgments of 9 March 2011 case file VI SA/Wa 2169/10 and case file VI SA/Wa 2171/10 dissmissed complaints filed by Der Grüne Punkt-Duales System and Rekopol. Both companies filed cassation complaints. The Supreme Administrative Court in its judgments of 21 November 2012 case file II GSK 1551/11 and case file II GSK 1646/11 dismissed them both which in consequence lead to the final lapse of both trade mark rights on the Polish territory.

Trade mark law, case VI SA/Wa 769/12

November 5th, 2012, Tomasz Rychlicki

Red Bull GmbH requested the Polish Patent Office to decide on the lapse of the word-figurative trade mark TAURUS IR-604762 owned by Gablitzer Getrankeindustrie und Kaffeehandelsgesellschaft M.B.H. from Austria, and effectively registered on the Polish territory since 27 July 1993. Red Bull claimed that Gablitzer Getrankeindustrie und Kaffeehandelsgesellschaft was deleted from the registry of entrepreneurs in June 2001, and attached, as evidence, an excerpt from the register, which showed that the trade mark proprietor after the bankruptcy has been removed from the register of companies. Red Bull provided also a certified translation of the document.

IR-604762

The Adjudicative Board of the Polish Patent Office in its decision of 14 December 2011 case no. Sp. 286/10 ruled on the lapse of the right of protection as on 13 September 2007. Red Bull requested the PPO to correct an obvious mistake in the date of the lapse. The Company noted that the PPO made that mistake, because there was an error in translation into Polish of the extract from the Austrian register. Red Bull attached corrected translation from the German language, explaining the reasons for the correction. The PPO in its order of January 2012 ruled that the mistake was no committed by PPO, but by the translator. Thus, it was not subject to correction. Red Bull filed complaint against the decision.

The Voivodeship Administrative Court in its judgment of 5 September 2012 case file VI SA/Wa 769/12 annulled the contested decision, and ruled it unenforceable. The VAC noted that the public authority is obliged to carry on the proceedings in the Polish language, both in oral actions and in order to keep the documentation of the procedure in Polish, and it’s a legal obligation to use in administrative proceedings translated documents. However, the Court held that the public authority, acting on the request of a party, cannot decline to investigate the content of the document along with its translation, as the results of this examination should be unambiguous, and failure to do so, constitutes a breach of the rules of administrative proceedings that may have a significant impact on the outcome of the case. The case-law of administrative courts generally accepted the rule that – regardless of the requirements of Article 5 of the Act on the Polish language – the evidence is the content of the document created in foreign language, not its translation. Translation does not a substitute a document written in a foreign language, but serves only to determine what is the content of that document.

Trade mark law, case VI SA/Wa 1203/11

April 24th, 2012, Tomasz Rychlicki

VINEX PRESLAV from Bulgaria requested the Polish Patent Office to decide on the lapse of the right of protection for the trade mark MADARA R-97447 owned by Dimyat Polska Sp. z o.o. Earlier, VINEX PRESLAV applied to the PPO to recognise on the territory of the Republic of Poland of the protection for its international trade mark MADARA IR-0929344. In the preliminary refusal sent to the WIPO, the PPO informed that the trade mark MADARA R-97447 is an obstacle to recognise the protection of the trade mark MADARA IR-0929344 on the Polish territory. VINEX argued that the disputed sign has never been used in Poland in relation to the goods covered by the registration, namely goods from Class 33 such as beverages, wine, spirits, brandies and cognacs. Dimyat claimed that it has acquired the right of protection in 1998, but because of “unexplained delay”, the entry in the register of trade marks was made in 2002. The company had to find a licensee, and the PPO by its decision of March 2005, has made an entry of the licensee into the register. However, under the decision of April 2006, the licensee has been removed from the register. The “confusion” around the entry of a licensee undermined Dimyat’s belief and faith whether the company will be able to exercise that right at all. The PPO decided on the lapse of the right of protection.

IR-0929344

Dimyat Polska filed a complaint against this decision. The company argued that there existed serious reasons of non-use. Dimyat became a legal successor of the trade mark MADARA R-97447, however this right was obtained after several years of court battles which finally ended in 2002, and the PPO was aware of this legal disputes. Dimyat claimed that the objective circumstances relating to the acquisition of the trade mark (the acquisition of a company in liquidation), objective circumstances preventing the transfer of its right of protection (the court proceedings in order to recognize the acquisition of a trade agreement to be effective), the objective circumstances relating to the license (all the PPO actions that were associated with the deletion of the license agreement and the appeals) significantly prevented Dimyat from the use of the disputed trade mark.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 October 2011 case file VI SA/Wa 1203/11 reversed the contested decision, ruled it unenforceable, and returned the case to the PPO for reconsideration. The Court held that it is the responsibility of the PPO, to examine the request for the lapse of a trade mark in the light of the existence of valid and serious reasons of non-use, if such an argument is raised by the owner. The Court noted that the Polish Industrial Property Law uses the term “serious reasons” but does not provide explanation of its characteristics, or even a list of examples. The case-law established that these circumstances are all the events and situations, which exclude allegations of blameworthy conduct of the holder of the trade mark registration. These events include primarily those that bear the characteristics of force majeure or other external circumstances impossible to foresee and to prevent them, as well as factual and legal obstacles that are independent from the will of the owner.

Trade mark law, case IV CSK 393/10

October 5th, 2011, Tomasz Rychlicki

Hochland Reich Summer & Co. KG owns a three-dimensional trade mark IR-736770 in Poland, and Hochland AG is the owner of the right in registration of an industrial design Rp-5337. The 3D trade mark is not used in the clear registered form, but is marketed as a product package of ALMETTE cheese, with additional verbal and figurative elements. Both Hochland AG and Hochland Reich, Summer & Co. KG, together with Hochland Polska sued the Polish dairy cooperatives in Piątnica, because it has used the packaging for cheese, on which a graphic of a wooden pail that was similar to Hochland’s trade mark and design, was placed.

IR-736770

The District Court in Białystok in its judgment of 13 October 2009 case file VII GC 49/07 dismissed the suit and refused to recognize the trade mark as a reputed one. However, the Court agreed with the opinion issued by the expert witness that a clean pail, without any identifiers, stands out positively in comparison to other packagings, and by its distinctive shape is strongly associated with the Almette brand. The District Court agreed with Piątnica that this trade mark was not used in trade in its registered form, and that Hochland did not prove that the use of cup-like pail brings Piątnica unfair advantage or is detrimental to the distinctive character of Hochland’s trade mark, which is a prerequisite to the protection of reputed/renown trade marks. The Appellate Court in Białystok in its judgment of 26 February 2010 upheld these findings except the costs and the issue of trade mark use. Hochland filed a cassation complaint.

The Supreme Court in its judgdment of 10 February 2011 case IV CSK 393/10 found that the Appellate Court decided that the expert’s opinion had no probative value because of the unrepresentative range of research on which it was based, and as a result, the Court found that Hochland failed to prove that its trade mark is a distinctive sign, with reputation. The Appellate Court spoke on the inadequacies of the expert opinion only in the justification of the judgment, and not during the proceedings, which precluded Hochland from filing proper evidence. The Supreme Court ruled that renowned trade marks enjoy special protection – wider than the other trade marks, i.e., even if there is less similarity between trade marks or the goods. In the case of reputed signs, the risk of confusion or the likelihood of confusion is not required. The association with the earlier renowned sign is a sufficient condition. The Court noted that the Polish Industrial Property Law does not provide any definition of reputable trade mark, but only points to the specific conditions of protection. The Supreme Court emphasized that the definitions provided in the legal commentaries, as well as in the case law of the Court of Justice of the EU and Polish courts, differ in this respect. The Court noted that a reputable trade mark is recognized by a significant part of relevant public. The Polish legal commentators argue that such a sign must be known at least by 25 percent of relevant public, and if the percentage exceeded 50 percent, the reputation is always proved. The Supreme Court also noted that the protection of a reputable trade mark does not require the owner to prove that the use of a similar trade mark has brought its user unfair advantage or was detrimental to the distinctive character or the reputation of the earlier mark. A mere possibility of obtaining unfair advantage by the infringer or the very possibility of harmful effects to the distinctive character or the repute of the earlier trade mark, is a sufficient condition. Therefore, these conditions have normative and hypothetical nature. The Supreme Court held that the Appellate Court erred in the examination of the opinion of another expert witness, who showed that the use of the image of a wooden pail on the packaging of cheese, in the assessment of 69% of consumers may affect their decision on the purchase of goods, and therefore it could potentially influence the purchase of the goods produced by the defendant in its packagings. This circumstance was important for assessing whether the use by the defendant of Hochland’s trade mark could bring Piątnica unfair advantage at the expense of the owner of the trade mark, who first used the sign and incurred substantial costs for its promotions within a few years.

The Appeallate Court in Białystok in its judgment of 7 July 2011 case file I ACa 305/11 was bound by the decision issued by the Supreme Court. The Court pointed out that according to the opinion of Grzegorz Urbanek, who was appointed as an expert witness, the wooden pail is associated to the Almette brand in the perception of most respondents. Both the opinion and attached results showed that even a same wooden pail without and with identifiers has the same effect, i.e. the half of the respondents, because of the packaging, was willing to buy the Almette cheese, and not other cheese of the same type but in the same packagings. Therefore, the Appellate Court prohibited Piątnica to use in the course of trade of a figurative sign representing a wooden pail with a handle, on the packaging of its cheese products. Piatnica still uses the packaging for its cheese, which is similar to a wooden pail. The dairy cooperatives replaced the image from the packaging with the milk-churn with pouring milk.

Trade mark law, case II GSK 259/10

April 7th, 2011, Tomasz Rychlicki

Mariusz Lech Przedsiebiorstwo Produkcyjno-Handlowo-Uslugowe LECH-POL from Lask requested the Polish Patent Office to invalidate the right of protection for the word trade mark “lech wódka” R-145285 registered for Fabryka Wódek POLMOS ŁAŃCUT S.A. for goods in class 33 such as alcoholic beverages: vodka. Mariusz Lech argued that the questioned trade mark is confusingly similar to his word-figurative trade mark LECH-POL R-132854 and the word trade mark “mariusz lech” R-113305, both registered for good in class 33 such as alcoholic beverages.

The PPO dismissed the request and noted that Mr Lech’s trade mark were not genuinely used for all goods. In 2007 the PPO decided on the lapse of the protection rights for both trade marks in all goods except wines, this cases went through all instances. See “Trade mark law, case II GSK 708/08“. Therefore, the compared goods are different due to existing specialization in the alcohol industry and the awareness of that specialization among potential customers is also important, because the average buyer is aware that the vodka manufacturer does not produce wine, and vice versa. These trade marks may exist on the market without collision. Mariusz Lech filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 16 October 2009 case file VI SA/Wa 1050/09. LECH-POL decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 10 February 2011 case file II GSK 259/10 dismissed it. The SAC ruled that the conditions of production of wines and vodka are different. The packagings and sealing of such goods differs and there are different conditions of sale of such products. Vodka in not sold in the wineries, and in case when both types of goods are in a shop, (usually displayed on different shelves in malls), their location is clearly separable. The development of shopping centers and various self-service shops of retail chains, makes the criterion of sales conditions less important when it is used for assessing the similarity of the goods. The Court noted that vodka and wine, because of varying alcohol content, must be treated as different types of alcoholic beverages, which is also reflected in the provisions the Polish Act on Upbringing in Sobriety and Counteracting Alcoholism of 26 October 1982 and the permits that are granted under this Act for trade and service of alcoholic beverages are issued separately for each kind of beverage from a separate pool of permissions. The Court also ruled that the incidental possibility that the producer of wines and spirits is the same entity does not lead to the conclusion that these beverages are of one type.

Trade mark law, case Sp. 457/08

February 21st, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the registration of the industrial design “bottle with cap” Rp-2543 owned by Zakład Produkcj Opakowań Rosiński i S-ka sp.j. The request for invalidation was filed by Unilever, which claimed that the design infringes on its 3D trade mark R-134678. This 3D trade mark has the form of a bottle for liquids and it was registered on 20 March 2002 (with a priority of 29 January 1999) for goods in Classes 03 and 05 such as detergents, preparations and substances all for laundry use, fabric conditioning preparations, bleaching preparations, cleaning, polishing, scouring and abrasive preparations, soaps, deodorants for personal use, hand washes disinfectants, sanitary preparations, preparations for destroying vermin, insects and noxious animals, fungicides, germicides, bactericides, parasiticides, algicides, insecticides, weedkillers, deodorants, other than for personal use, air freshening preparations, insect repellents. The decision of the PPO was uphold by the Voivodeship Administrative Court. Rosiński filed a cassation complaint and the Supreme Administrative Court agreed with the Polish company and returned this case for reconsideration. The PPO will again decide on the invalidation of the industrial design in question.

Rp-2543

Meanwhile, during the battle over the industrial design, Rosiński requested the Polish Patent Office to decide on the lapse of the right of protection to 3D trade mark R-134678.

Rosinski claimed that the 3D mark in question must be treated, as the so-called weak sign. A bottle as such, is not, remarkably original shape significantly different from other packaging that are available on the Polish market for liquid toilet cleaners. Rosinski emphasized that the registered form of a trade mark significantly differs from the form that is actually used. Only the label, take than 50% of the bottle, and it is insignificant part of a packaging, that attracts attention of the buyer. Rosinski also noted that Unilever cannot argue and prove that the use of the mark in the form without additional elements is genuine use if the actually used a form of a registered trade mark (with labels) was subject to a separate registration (word-figurative trade mark Domestos SPRING FRESH THICK DISINFECTING CLEANER KILLS ALL KNOWN GERMS R-155952). Rosiński added that while the request does not seek to challenge the general idea of registrability of 3 dimensional trade marks such as the shapes of packages. However, such registration has its consequences. While, Unilever was allowed to register its bottle, and as a rule all the other manufacturers are allowed to do, these are weak signs, because such registration does not break the idea of a bottle for fluids.

R-134678

Unilever argued that Rosiński has no legal interest (locus standi) in requesting the lapse and presented a series of evidence on the genuine use of its 3D trade mark. The evidence included market research of 2009 on the knowledge of the DOMESTOS bottle shape amongst consumers, annual (1999-2000) spendings on television advertising of Domestos, black and white and color prints of television commercials, CD with TV ads recorded on it, color printings of press advertisements, series of judgments issued by French and German courts that were consistent with Unilever’s arguments.

R-155952

The Adjudicative Board of the PPO composed of five members (usually the board decides a case in a panel composed of the chairman and two members of a board, but five members’ board may be appointed for hearing complicated cases) in its decision of 20 December 2010 case file Sp. 457/08 ruled on the lapse of the right or protection because of non-use in the form in which the trade mark has been registered. The PPO agreed that Rosiński presented clear evidences on locus standi. All legal actions initiated by Unilever were directed against Rosiński’s freedom of business activity and this justified the request to the PPO to decide on the lapse. The PPO held that all submitted materials do not themselves constitute evidence of the genuine use of a bottle with a red cap without a label. Unilever did not show the place and time, extent and nature of use of its trade mark based on specific and objective evidence. The PPO noted that Unilever is the holder of other trade marks that have the same shape, especially word-figurative trade mark R-155952 and R-107207, IR-787372 and IR-798868 and according to the case-law, if there is a registered form of the trade mark with a label and it is genuinely used, then one cannot argue about the genuine use of another registered trade mark that lacks these additional elements. The PPO also ruled that evidence in the form of private public opinion research was dated on 2005 and did not constitute direct evidence of the genuine use of a green bottle with red cap but rather it tried to prove the renown of another trade mark with a label. Also, according to the case-law of the Polish Supreme Administrative Court, the reputation of a trade mark does not preclude the issuance of a decision on the lapse of this trade mark. The PPO ruled that frames from the TV ads and print ads were poor quality and were not in any way dated, It was also not proven whether the TV ads were aired in Poland. There has not also been proved that these ads were even broadcasted. As regards the print ads there were not provided titles of newspapers that the ads appeared nor numbers or dates of editions, and often other bottles of Domestos product appeared in these materials. Judgments of foreign courts that were submitted in this case are not very important considering that the law under which they were issued is not valid and binging in the Republic of Poland and each case before the PPO is examined individually based on specific facts of the particular situation. Also it was difficult for the PPO to consider these decisions to be persuasive, becasue the 3D sign must retain its individual character and it needs to designate the origin of goods and in this case Unilever had other trade marks of the same shape.

Therefore, in the opinion of the Polish Patent Office, Unilever has not produced evidence of the genuine use of the 3D trade mark R-134678 on the Polish territory during an uninterrupted period of five years after the date of the decision to grant a right of protection. This decision is not final yet. A complaint may be filed to the administrative court. HT goes to Grzegorz Pacek.

Trade mark law, case VI SA/Wa 203/10

October 11th, 2010, Tomasz Rychlicki

The Polish company INTERKOBO Sp. z o.o. filed a request for the invalidation of the right of protection for the trade mark kucyk pony R-139097 that was registered for HASBRO POLAND Sp. z o.o. Kucyk means “pony” in Polish language. INTERKOBO argued that it has the legitimate interest in the invalidation proceedings because it is a manufacturer of toys, and it offers products such as toy ponies. In addition, in the cease and desist letter dated on 24 April 2007, HASBRO called INTERKOBO to stop the infringement of the right of protection for trade mark “kucyk pony” R-139097 which consisted of using by the INTERKOBO of “Princes’ s Pony” sign for designation of ponies’ toys. INTERKOBO argued also that HASBRO restricts the freedom of economic activity of its competitors, asking them to stop marketing of toys in the form of a small pony and requesting destruction of such products. By registering of the trade mark in question HASBRO had the intention of its use in isolation from the goods for which it was registered, and the intention of closing the access to the market for its competitors, the more that HASBRO as a professional market player should knew or should have known that the term “kucyk pony” as used for the toys in the form of a pony does not have any sufficient distinctiveness. INTERKOBO stressed that HASBRO Sp. z o.o. is a part of capital group operating on the global toys market, which is the position that allows it to dominate the market for local manufacturers of toys and contrary to the scope of the use made of registration to combat competition, which is contrary to the principles of the social coexistence. HASBRO claimed that its sign is used on the Polish market, on the packaging of “kucyk pony” toys and other materials, since 1998 and is the subject of a number of marketing activities, and the brand “kucyk pony” includes not only toys, but also videos and a monthly magazine for children. HASBRO argued that its trade mark has a strong distinctive character and can be regarded as a reputable one, in relation to the goods it designates it has the so-called primary distinctive character. The Polish Patent Office dismissed the request. INTERKOBO filed a complaint against PPO’s decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 24 June 2010 case file VI SA/Wa 203/10 affirmed this decision and dismissed the case. The VAC held that the trade mark in question is is a fanciful sign and has the primary distinctive character. It is not a generic name of any of the listed goods, and it does not inform about their properties. Pony (in Polish: kucyk) is the generic name of the horse species while it is not the name of the goods protected by the trade mark, which goods do not have any direct connection with any species of horses.

Trade mark law, case VI SA/Wa 173/10

July 18th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 21 May 2010 case file VI SA/Wa 173/10 held that the statutory condition for the lapse of the right of protection is intended to eliminate the rights of protection granted to those signs that are not actually used in trade. The grant of the protection for a trademark is associated with the statutory obligation of genuine use of the mark for goods and services for which the trade mark is registered. It cannot be used symbolically, only to maintain the rights of registration. This case concerned the proceedings on lapse of the right of protection for “transpak gotuj ze smakiem” R-129729 trade Mark owned by Grajewski Zbigniew, Przedsiębiorstwo Produkcyjno-Usługowo-Handlowe TRANSPAK from Puszczykowo.

Trade mark law, case II GSK 120/09

December 13th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 30 September 2008 case file VI SA/Wa 1042/08 dismissed a complaint against the decision of the Polish Patent Office on the lapse of the right of protection for APETITO IR-615850 trade mark in part concerning the goods in Class 29. See “Trade mark law, case VI SA/Wa 1042/08“. The owner – APETITO AKTIENGESELLSCHAFT – filed a cassation complaint.

The Supreme Administrative Court in its judgmet of 6 October 2009 case file II GSK 120/09 dismissed the complaint and held that when a person who shows its legitimate interest file a request for the invalidation of a registered trade mark becasue of non-use, the owner of the right of protection for this trade mark has to show the use of the mark in question or the existence of valid reasons justifying non-use. The scope of holder’s duty is defined within the scope of legal interest arising from a standing to file a request for the invalidation.

Trade mark law, case II GSK 708/08

June 26th, 2009, Tomasz Rychlicki

On June 2007, the Polish Patent Office issued a decision in which it has invalidated the right of protection for the word-figurative trade mark Lech-Pol R-132854 that was registered with the priority date of 1998 for goods in Class 33 and owned by Mariusz Lech Przedsiebiorstwo Produkcyjno-Handlowo-Uslugowe LECH-POL from Lask. The right of protection was invalidated in part for alcoholic beverages except for wine. The request was filed by the Polish company Fabryka Wódek POLMOS LAŃCUT S.A. from Lańcut. The company from Lańcut proved that it had a legitimate interest to have standing in proceedings before the Polish Patent Office, based on the fact that on May 2005 Mariusz Lech filed before the PPO a request to invalidate the right of protection for the trade mark lech wódka R-145285.

According to Polmos Lancut’s arguments, Mariusz Lech used the disputed trade mark only for products such as strong fruit wines. He was not imposing this sign on all other alcoholic beverages in Class 33. Mariusz Lech argued that, since mid-2001, he began efforts to start the production of vodka under the disputed trade mark. As a potential market for these articles he considered the teritory of Ukraine and the Republic of Poland. With this end in view, a design of bottles bearing these trade marks and labels were made. There were also discussions on the distribution of alcohol in Ukraine. However, with regard to the obstacles, the plan was not realized.

The PPO ruled that simply taking the preparatory steps which had no connection with a valid reason that could prevent the use of a trade mark, does not constitute the grounds for dismissal of a request for invalidation of the right of protection.

Mariusz Lech filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 5 February 2008 case file VI SA/Wa 2019/07 dismissed it. Mariusz Lech filed a cassation compalint. The Supreme Administrative Court in its judgment of 16 April 2009 case file II GSK 708/08 dismissed it.

See also “Trade mark law, case VI SA/Wa 1042/08” with regard to issues of non-use and genuine use.

Trade mark law, case II GSK 762/08

April 12th, 2009, Tomasz Rychlicki

Bauer Publishing House owns the word-figurative trade mark TWÓJ STYL R-69382 which is registered for goods such as printed matter, newspapers, magazines, books, packaging, clothing, shoes, advertisement services for third-party hotel and catering services. In 2007 the Polish Patent Office issued a decision on the lapse of the right of protection for TWÓJ STYL trade mark in class 25 for goods such as clothing and shoes.

The Voivodeship Administrative Court in Warsaw in its judgment of 6 February 2008 case file VI SA/Wa 1418/07 agreed with PPO’s decision and dismissed Bauer’s complaint. The Company filed a cassation complaint.

R-69382

The Supreme Administrative Court in its judgment of 12 March 2009 case file II GSK 762/08 has dismissed Bauer’s cassation complaint. The SAC ruled that, according to Polish case law and legal doctrine, the “genuine use” of a trade mark should be directed towards the consolidation of the brand in the market and should seek for its awareness between consumers and competitors. The opposite to “genuine use” is usually the occasional action taken in order to avoid a non-use accusations and actions that are taken other than for purposes of actual business activity. As part of the obligation to make genuine use of a mark, Polish doctrine established the concept of “preparatory action”, which allows to preserve of the right of protection for a trade mark and possible refutation of the non-use allegations. Examples of such “preparatory action” are: a contract of the importation of goods bearing the trade mark, intense advertising in the media or a license agreement for trade mark use. These are activities that aim to genuinely use a trade mark and such actions should be temporarily and functionally associated with the future use of a trade mark. According to the PPO’s findings the owner of TWÓJ STYL trade mark sold clothing with this sign, but this activity ended in 1998 with the last sale of these products.

Trade mark law, case VI SA/Wa 1042/08

April 3rd, 2009, Tomasz Rychlicki

On July 2003 the French company Bongrain S.A. from Viroflay asked the Polish Patent Office to decide on the lapse of the right of protection for APETITO IR-615850 trade mark. The Polish Patent Office must consider whether there has been a lapse of the right of protection for a trade mark at the request of any party having a legitimate interest. The French company claimed its interest based on trade mark application to register the word trade mark APETITO Z-204328.

The request was based on articles 169(1)(i) 169(2) and 169(6) 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 Dziennik Ustaw (Journal of Laws) of 2001 No 49, item 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, item 1117, with subsequent amendments.

1. The right of protection for a trade mark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exist,
(…)

6. Where a proceeding for the declaration of the right of protection lapsed is initiated, the burden of proof that the trade mark has been used or that serious reasons for non-use of the trade mark exist shall be on the holder of the right of protection.

The Polish Patent Office decided on the lapse of the right of protection for APETITO IR-615850 trade mark in part concerning the goods in Class 29. The owner – APETITO AKTIENGESELLSCHAFT – filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 30 September 2008, case file VI SA/Wa 1042/08 dismissed the case and ruled that in order to aviod the situation of non-use of a trade mark, the use has to take place in the territory of the Republic of Poland. It has to have an unequivocal nature, as well as being real and serious, and should apply to a registered trade mark for goods and services covered. The actual use of a trade mark to prevent the lapse of the right of protection should consist of affixing the mark to goods and putting of such designated goods on the market within a specified period of time. The period of time is crucial for a revocation of the right protection. The preparatory steps to use the trade mark cannot be equated with the reasons to justify the occurrence of non-use of a trade mark. Taking certain preparatory steps which are without a connection with a valid reason that is preventing the use of a trade mark can not determine a dismissal of a request to decide on the lapse of the right of protection. The judgment is not final yet. APETITO AG filed a cassation complaint. See “Trade mark law, case II GSK 120/09“.

Trade mark law, case Sp. 27/06

January 19th, 2009, Tomasz Rychlicki

On 9 February 2000, the Polish Patent Office granted the right of protection for the word trade mark PICKENPACK R-118206 applied for on 27 September 1996, the Polish entrepreneur Katarzyna Warzocha from Koniecpol, for goods in classes 29 and 30 such as frozen meat products, fish, poultry and game, frozen fruits and vegetables and frozen flour products.

R-118206

German company Pickenpack-Hussmann & Hahn Seafood GmbH from Lüneburg owned an international registration for the word-figurative trade mark PICKEN PACK IR-520553 in class 29 for goods such as meat, fish, poultry and game as well as cooked fruit and vegetables, cooked take-away dishes mainly consisting of meat, fish, potatoes and/or other vegetables; all these goods are deep frozen. The registration was granted in the Republic of Poland on October 2008. German company filed before the Polish Patent Office a request to declare the lapse of trade mark protection based on provision of article 169(1)(i) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

1. The right of protection for a trademark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons for its non-use exist,

Katarzyna Warzocha argued that she started to use the contested trade mark in the previous two years during talks with contractors interested in her offer. She provided information that the PICKENPACK trade mark had been used for frozen products, advertising flyers, business cards and offers of cooperation. Katarzyna Warzocha claimed that the goods labelled with this trade mark were present at the Polagra fair in the years 2001-2005. She also declared that she was able to provide statements of companies, which took supplies of frozen products poduced by her company. German company argued that this was not real evidence of actual use. On 6 November 2008, the PPO postponed the hearing in this case act signature Sp. 27/06 to supplement the evidence.

Trade mark law, case Sp. 332/07

November 8th, 2008, Tomasz Rychlicki

The Polish Patent Office in its recent decision 18 September 2008 case no Sp. 332/07 of has partially invalidated VOGUE trade mark registered for Advance Magazine Publishers Inc. from USA. The invalidation proceedings were started by Polish entrepreneur Mariusz Lipski from Szczecin, performing his business under the firm “Vogue”. Mr Lipski applied for invalidation of VOGUE trade mark R-68616 in class 18 (leather and imitations of leather, and goods made of these materials) and in class 25 (clothing including footwear, elastic-sides and slippers). Mr Lipski based his legitimate interest on the fact that he was charged in criminal proceedings for the use of VOGUE trade mark. Mr. Lipski has also based his request on constitutional provsion of freedom of economic activity. On 16 June 2008 after filing a request for invalidation of the right of protection Mr. Lipski has also applied for trade mark protection for VOGUE sign Z-342213 in class 25 for goods such as clothing for gymnastics, waterproof clothing, clothing made of leather imitation, garments, household slippers, football boots, beach shoes, jackets, coats, etc.

Advance Magazine Publishers’ representative claimed that VOGUE trademark is used in class 18 and 25 by publishing a magazine with fashion regarding those products. However he also acknowledged the fact that VOGUE magazine is not published in Polish language.

The PPO took into account the request for invalidation and ruled that VOUGE trademark should be partially invalidated. The PPO held that publishing of a fashion magazine can not be an evidence of the use of the mark for such goods as clothing, shoes, or products made of leather. It has to be demonstrated and proved that a mark was placed on the goods and introduced on the Polish market.

Trade mark law, case II GSK 252/06

June 30th, 2008, Tomasz Rychlicki

The British company Imperial Tobacco Limited requested the Polish Patent Office to decide in litigation procedure on the lapse of a right of protection for trade mark MOON R-91725 owned by Polish company Altadis Polska S.A. Imperial Tobacco based its legal interest on the fact that it has applied for the recognition on the territory of the Republic of Poland of the protection for the international trademarks with the word element MOON IR-811335, IR-812000, IR-811953 and IR-811992. These trade marks were intended to designate goods in Class 34. The Company wanted to use them in Poland. Imperial Tobacco also pointed out that the trade mark MOON R-91725 was not used on the Polish territory in the way that is required by law.

Altadis demanded the dismissal of the request. The Polish company argued that Imperial Tobacco has no legal interest in seeking the lapse of a right of protection for the trade mark MOON R-91725, because John Player & Sons Limited of Ireland is the company entitled to international registrations of above-mentioned trade marks.

The PPO dismissed the request and PPO’s decision was upheld by the Voivodeship Administrative Court in Warsaw in its judgment of 30 March 2006 case file VI SA/Wa 2048/05. The Court based its reasoning on the lack of legal interest. Imperial filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 February 2007 case file II GSK 252/06 held that the entrepreneur who plans to place on the domestic market identical or similar goods bearing a sign that is identical or similar to registered but unused trademark, has a legal interest in requesting the PPO for the decision on the lapse of a right of protection for the trade mark because of its non-use by the holder, provided, however, that such entrepreneur will demonstrate that its intention is real and genuine, especially if it’s a manufacturer of such goods and introduces them to a common market under the sign.

Trade mark law, case II GSK 114/07

December 11th, 2007, Tomasz Rychlicki

Clinique Laboratories, LLC, the owner of the word-figurative trade mark C CLINIQUE R-51732 requested the Polish Patent Office to decide on the lapse of the right of protection for the word-figurative trade mark CLEANIC’ R-95489 owned by the Polish company HARPER TRADE Sp. z o.o. Clinique Laboratories justified its legal interest by the fact that, at the time of filing the request, the company was deprived of full access to its earlier Polish trade mark registration because the later trade mark invaded its scope of protection with regards to goods in Class 3, mostly cosmetics. Further arguments raised included that the right to business activity freedom, protected by the Polish Constitution and Article the Polish Act on Business Activity.

R-51732

The PPO decided on the lapse of the right of protection. HARPER TRADE Sp. z o.o. filed a complaint against this decision. The Voivodeship Administrative Court in its judgment of 16 October 2006 case file VI SA/Wa 770/06 dismissed it. HARPER TRADE Sp. z o.o. filed a cassation complaint.

R-95489

The Supreme Administrative Court in its judgment of 21 November 2007 case II GSK 114/07 repealed the contested judgment and the decision of the PPO, deciding that the interest specified by the owner of an earlier trade mark was not a legal interest, as defined by the Administrative Procedure Code, because it was not current but, at most, a future interest connected to events that may not happen, because the owner of the later unused trade mark may not decide to produce cosmetics in Class 3 and never trespass upon the scope of protection of the earlier mark. The Court also concluded that the provisions of the Polish Constitution and the Act on Business Activity were too vague to constitute a real legal interest.

Trade mark law, case II GSK 13/07

July 19th, 2007, Tomasz Rychlicki

The Polish entrepreneur Wierzbicki Jan, Krzywdziński Andrzej Przedsiębiorstwo Produkcyjno Handlowo Usługowe MACRO applied to the Polish Patent Office for the right of protection for the trade mark ŚWIAT KAWY I HERBATY (TEA AND COFFE WORLD) Z-205579, for goods in Classes 30, 42. Dariusz Z. who conducts its business under the company name “Świat Kawy i Herbaty”, and who had established contractual relationships with the applicant, submited to the PPO his observations as to the existence of grounds that may cause a right of protection to be denied. The PPO refused to grant the right of protection for the trade mark “ŚWIAT KAWY I HERBATY”. MACRO filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 27 July 2006 case file VI SA/Wa 871/06 upheld the contested decision and MACRO filed a cassation complaint.

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

Trade mark law, case II GSK 173/06

November 8th, 2006, Tomasz Rychlicki

On 10 December 2003, Eska Nord Sp. z o. o. requested the Polish Patent Office to decide on the lapse of the right of protection for “Radio 73,2 Fm ESKA” R-98909 trade mark due to the non-use. The applicant explained that since 1993 it operates as a commercial radio station that broadcasts its program in the Tri-City region (Gdańsk, Sopot and Gdynia) and the surrounding area, using the ESKA-NORD brand. The applicant has claimed its legal interest (locus standi) from the fact that the District Court in Gdańsk issued on 1 August 2003 an order prohibiting Radio ESKA S.A. the broadcasting at radio frequency 94.6 MHz in Gdynia and 90.7 Mhz in Gdansk, and prohibiting radio broadcasting and advertising under the names Eska and Eska Trójmiasto.

R-98909

Radio Eska S.A. sought to dismiss the request and provided the correspondence with the National Broadcasting Council on the use in 1999, of the questioned trade mark in the registered form. The company explained also that it ceased using in “73.2” number in the questioned sign as it was justified because it changed the broadcasting frequency under the Regulation of the Minister of Communications dated 16 December 1999 on the frequency allocation and frequency ranges in the Republic of Poland and the conditions of their use Official Journal No 109, item 1252.

The PPO its decision of 21 February 2005 dismissed the request and pointed out that timeframe to be considered whether disputed trade mark was used and in what form includes the period of 5 year, i.e. between dates of 10 December 1998 and 10 December 2003.

The Voivodeship administrative Court in Warsaw in its judgmen of 7 February 2006 case file VI SA/Wa 1749/05 dismissed the complaint. The Court, pointed out to the fact that the use of the trade mark in broadcasted programs and in correspondence was the use in the course of trade and it met the requirement of genuine use as referred to in the IPL. The Court also noted that under Article 19(1) of the TRIPS the important reasons of the non-use is justified, are import restrictions or other government requirements for goods or services protected by a trademark.

The Supreme Administrative Court in its judgment of 10 October 2006 case file II GSK 173/06 held that the use of a trade mark in a form that differs from that for of a trade mark for which it was granted a right of protection, but in elements which do not alter its distinctive character, is also deemed as the genuine use. The SAC ruled also that there was the use of the trade mark in the form of RDS (Radio Data System) during the broadcast of radio programs and within a website available at eska.pl, presenting the logo of the station. In the first case while listening to the station with a radio equipped with RDS there were presented verbal communications, including communication with the station name (in this case: Radio Eska).