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Archive for: legal interest

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 122/12

November 27th, 2012, Tomasz Rychlicki

On 2004, JOOP! GmbH requested the Polish Patent Office to invalidate the right of protection for the word trade mark JUUPI ! R-103654 registered for goods in Class 3 and owned by “AQUAREL” Kosiorek Spółka Jawna. The German company argued that JUUPI ! is similar to its trade marks JOOP! R-64463 and JOOP! IR-73926 that were registered with the earlier priority. The PPO in its decision of 7 February 2006 no Sp. 323/04 dismissed the request. Joop! filed a complaint against this decision, but the Voivodeship Administrative Court in its judgment of 13 October 2006 case file VI SA/Wa 1339/06 dismissed it. Joop! decided to file a cassation complaint. The Supreme Administrative Court in its judgment of 5 July 2007 case file II GSK 98/07 overturned the judgment of the VAC and sent it back for further reconsideration. The SAC held that the PPO and the VAC misinterpreted the provisions of the Polish Industrial Property Law with regard to the knowledge and awareness of the requesting party on the use of the later trade mark for a period of five successive years. The Voivodeship Administrative Court in Warsaw in its judgment of 12 October 2007 case file VI SA/Wa 1403/07 re-examined the case in accordance with what has been determined by the Supreme Administrative Court. The case went back to the PPO. Meanwhile, JOOP! GmbH transferred the rights to JOOP! R-64463 and JOOP! IR-73926 to COTY B.V. COTY appointed its representative (advocate), who submitted to the case file properly paid power of attorney that authorized him to act in this particular case, together with a copy of the relevant register of companies, however it was not recorded in the minutes and documents offered have not been adopted in the case file, which also has not been recorded in the minutes of the hearing, because the Polish Patent Office did not consider these requests and documents as coming from the party of the proceedings. The PPO dismissed the request, and decided that opposed trade marks are not similar, and the reputation of JOOP! R-64463 has not been proven. COTY filed a complaint against this decision.

The Voivodeship Admiistrative Court in Warsaw in its judgment of 2 August 2012 case file VI SA/Wa 122/12 dismissed it and ruled that the existence of legitimacy to file a complaint is subject to examination by the administrative court. This is the basic step, the result of which depends on the further course of the proceedings. The finding by the court that the complaint to the administrative court was brought by a party without legitimacy to file such a complaint, resulting in dismissal of the complaint without examining the merits of the contested decision. The Court held that the transfer (assignment) of trade mark rights in the course of proceedings before the Court for invalidation of the right of protection for a trade mark, i.e. rights to a trade mark that was used as an opposing sign, does not create the right for the new owner to seek legal interest (locus standi) in this proceedings as a party to the proceedings.

Trade mark law, case VI SA/Wa 1716/11

November 15th, 2012, Tomasz Rychlicki

On 4 January 2011, the Polish Patent Office invalidated the right of protection for the word-figurative trade mark PIEKARNIA CUKIERNIA Jacek Gaj R-175774. The request for invalidation was filed by the Polish company who owned similar earlier trade mark registration. The PPO cited findings included in the judgment of the Court of Justice of 6 October 2005 case C-120/04 and in the judgment of the Supreme Administrative court of 26 October 2006 case file II GSK 37/06, and agreed with the Courts that by adding to the complex trade mark of the word element, indicating the company from which the goods originate, such method does not remove the risk of misleading the public, since the perception of the mark as a whole may lead to the impression that the goods or services of compared signs come from companies that are economically linked. Jacek Gaj filed a complaint against this decision.

R-175774

The Voivodeship Administrative Court in its judgment of 20 February 2012 case file VI SA/Wa 1716/11 dismissed it. The Court ruled that general perception of trade marks by a potential customer – the consumer, is crucial for assessing the similarity. Verbal elements are generally dominant in the complex signs, but not when they are purely informative, descriptive, including word elements with the name of the other business.

Trade mark law, case II GSK 615/10

September 7th, 2011, Tomasz Rychlicki

Mr Roman Oraczewski Oficyna Wydawnicza PRESS-MEDIA requested the Polish Patent Office to invalidate the right of protection for the trade mark “Sto Panoramicznych” R-102530 owned by TECHNOPOL Agencja Wydawnicza Spółka z o. o. and registered for goods in Class 16 such as magazines. The PPO invalidated this trade mark and ruled that this designation is descriptive and informative, because it is carrying explicit message on the number and type of crosswords included in each copy of the magazine. TECHNOPOL filed a complaint against this decision, but it was dismissed by the Voivodeship Administrative Court in its judgment of 16 February 2010 case file VI SA/Wa 1862/09. TECHNOPOL decided to file a cassation complaint. The Comapny argued inter alia that its trade mark has acquired secondary meaning because TECHNOPOL also used similar signs, for instance “100 panoramicznych” R-102531, which is a modification of the trade mark “Sto Panoramicznych”.

The Supreme Administrative Court in its judgment of 25 May 2011 case file II GSK 615/10 dismissed the complaint and ruled that the use of a sign in order to prove its secondary meaning, can not be documented by the use of other similar designation that is also a separate, registered trade mark.

Trade mark law, case II GSK 269/10

August 5th, 2011, Tomasz Rychlicki

Polish company Przedsiębiorstwo Produkcji Lodów “KORAL” Józef Koral Spółka jawna from Limanowa, the owner of the word trade mark RED BLUE Z-277694 requested the Polish Patent Office to decide on the invalidation of the right of protection for the word trade mark RED BULL IR-708694 in part for goods in Class 30. KORAL claimed inter alia that the registration of the questioned trade mark was made in violation of Article 6(1) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, becasue goods in Class 30 are not subject to the activities of the Red Bull GmbH.

6.
(1) A trademark shall be registrable on behalf of a specific enterprise, but only in respect of goods falling within its field of economic activity.

On 15 December 2008, Red Bull informed the PPO that with effect from 5 December 2008, the Company renounced the protection of the questioned trade mark for goods in class 30 on the Polish territory. The PPO dismissed the request and noted that Red Bull GmbH is a limited liability company under the Austrian law. According to the registry of commercial activity, the company uses the Red Bull brand in the course of trade. In the opinion of the PPO, the Austrian law does not require further specification of the scope of the commercial activity of a company. The PPO has indicated that the minimum condition for which the entrepreneur must meet while applying for a trade mark in order to be grated the exclusive rights to that sign, is the intent of use. Such intent may be interpreted from the list of goods and services covered in the application and registration of the trade mark. KORAL filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 26 October 2009 case file VI SA/Wa 1263/09 dismissed the complaint and KORAL filed a cassation complaint.

The Supreme Administrative Court in its judgment of 13 April 2011 case file II GSK 269/10 dismissed the cassation. The SAC ruled that the Polish legislature adopted the law which implies that a trade mark may be registered if it’s related to the business activity of an entrepreneur and, therefore, that this is not property in itself, which can belong to anyone, but it is an intangible component of the company/enterprise, that serves to distinguis the goods or services from other goods and services of the same kind of other companies. The second of those conditions preclude the possibility of marking other goods than the goods covered by the activities of a company. There is no doubt that the product (or service) that is actually offered in the market by the company, is a commodity, which is the subject of its business. However, a trade mark can (and should) also be used for goods that are not currently offered. Therefore, some problems of interpretation arise in the case of these goods (and services) that can be marketed by the company in the future. The SAC noted that the case law and legal doctrine adopted the view, that commodities which are the subject of a business activity will also be goods or services, what a company intends to introduce to the market in the future. Thus, the need arose to determine the criteria that would allow for the identification of the types of goods that are covered at the time of filing of a trade mark application (and consequently by the registration) by the intention of marking them in the future by that trade mark. Such intention is disclosed by identifying of the company activities in the appropriate register, because it is a public declaration of the entrepreneur on which fields of economic activities it intends to participate, or what kind of goods or services it will be offering on the market.

Trade mark law, case VI SA/Wa 112/11

July 7th, 2011, Tomasz Rychlicki

Sfinks Polska S.A. from Łódź requested the Polish Patent Office to invalidate the rights of protection for word-figurative trade mark R-179260 owned by Restauracja CLEOPATRA Bachar Aziz from Lublin. Sfinks Polska is the owner of the earlier registered word-figurative trade mark SPHINX R-105162.

R-105162

Sfinks claimed that the trade mark CLEOPATRA R-179260 is similar to its trade mark and argued that it has legal interest in this proceedings as there is a possibility of misleading customers based on the similarity of trade marks. This may be particularly applicable considering the fact that SPHINX trade mark is already known on the market and, therefore, it has a stronger distinctive ability. Sfinks also argued that Bachar Aziz filed its trade mark in bad faith with an intent to use the reputation of Sfinks’ trade marks by suggesting a common origin from a single entity.

R-179260

Bachar Aziz requested the PPO to dismiss the case. He argued the Sfinks lacks legal interest in the invalidation proceedings. Moreover, he noted that the signs, in this case, are different conceptually and phonetically. The characters are not visually similar, the earlier trade mark has the form of a sphinx (face of a man resembling an ancient sculpture) and the sign in question shows a woman’s face (Cleopatra). Mr Aziz also noted that designation of the same services by these trade marks is not sufficient to determine the risk of common origin. In this regard, he relied on the collision-free existence of the two signs on the markets in Płock and Łódź. He pointed that other businesses use the representation of the Sphinx to designate their restaurants.

The Polish Patent Office in its decision case Sp. 396/08 dismissed the request. The PPO held that the trade marks, in this case, are different in all aspects. While assessing the risk of confusion of the recipients of the services offered by the parties to the proceedings, the PPO ruled that customers of restaurants do not act on impulse as shoppers do. When choosing the restaurant they base their actions on good knowledge of the place, recommendation or advertising, so, first of all, they choose a place based on the name, thus, it is the verbal layer of a trade mark (the name of restaurant), not the graphic element, that will be critical to their selection. Sfinks filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 16 June 2011 case file VI SA/Wa 112/11 overturned the decision of the Polish Patent Office and held it unenforceable based on entirely different circumstances that one could expect. At the hearing before the Court on 3 June 2011, Sfinks’s trade mark attorney argued that she was not present at the hearing on 16 June 2010 in the Polish Patent Office on the ground that the notice of the hearing was set at 11:00 a.m. and a hearing was held on at 10:00 a.m. Therefore, Sfinks could not be represented properly, as its representative was not able to submit evidence. The Court held that Sfinks did not participate in proceedings through no fault of its own and such situation was a violation of the provisions of the Polish Administrative Proceedings Code. The judgement is not final yet.

Trade mark law, case II GSK 1088/09

February 19th, 2011, Tomasz Rychlicki

Polish company Śnieżka Invest sp. z o. o. from Świebodzice requested the Polish Patent Office to decided on the lapse of the right of protection for the trademark GOPLANA MICHAŁKI R-139668 owned by Jutrzenka S.A. Śnieżka claimed that the questioned trade was not genuinely used in the period of five successive years after a decision on the grant of a right of protection has been taken. Śnieżka also owns michałki R-72668 trade mark and the company from Świebodzice argued that the market existence of GOPLANA MICHAŁKI sign would interfere its business.

Jutrzenka argued that there existed very serious reasons of non-use – the pending administrative proceedings for invalidation of its trade mark. Jutrzenka claimed that the use of the mark in the course of those proceedings would be irrational and it would expose the company to any future claims of Śnieżka. The PPO in its decision of 1 July 2008 no. Sp. 398/07 held that GOPLANA MICHAŁKI trade mark has lapsed. Jutrzenka filed a complaint. The Voivodeship Administrative Court in Warsaw in its judgment of 26 June 2009 case file VI SA/Wa 81/09 dismissed it. Jutrzenka filed a cassation complaint.

The Supreme Administrative Court in its judgment of 14 December 2010 case file II GSK 1088/09 dismissed the complaint and ruled that the case for invalidation of the trade mark registration does not qualify as an important reason for non-use thereof. The serious reasons should be factual and/or legal obstacles. These may be external events of force majeure nature that are impossible to predict and prevent. All circumstances relating to ordinary business risks, which concerns the current operations of each business cannot be deemes as such obstacles. A legal obstacle,preventing the use of a trade mark may be, for example, an individual administrative act prohibiting the use of the mark.

Trade mark law, case VI SA/Wa 1056/10

January 18th, 2011, Tomasz Rychlicki

This case concerned the opposition proceedings against the decision on grant of the right of protection for NATURTEA R-191045 trade mark, owned by the Polish company ZAS-POL Sp. z o.o., and registered for goods in Class 30 such as tea, fruit teas, black, green, red, flavored tea. The opponent argued that NATURTEA is not sufficiently distinctive, because it is a descriptive term that indicates only the type of product – tea. The Polish Patent Office dismissed the case and ruled that such a trade mark, as a combination of two words is a fanciful sign and does not indicate characteristics of the marked goods. The opponent decided to file a complaint against this decision. According to ZAS-POL, the law firm that was the applicant in this case, had no legal interest (locus standi) in the invalidation of the right protection.

The Voivodeship Administrative Court in its judgment of 30 September 2010 case file VI SA/Wa 1056/10 annulled the questioned decision and set the case back for reconsideration. The Court ruled that the PPO completely ignored evidence submitted by the opponent as to the existence of the term “natural tea” in the market, and in fact, the PPO relied solely on the arguments provided by the trade mark owner. It was an example of violation of the principle that requires the public administration body to comprehensively collect and examine all evidential material.

The VAC reminded also that legal interest is not required to be proven only in case of oppositions filed according to Article 246 of the Polish Industry Property Law, where any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right in registration, but only within six months from the publication in “Wiadomości Urzędu Patentowego” (the official journal of the Polish Patent Office) of the mention of the grant of a title of protection, and justifying at the same time the existence of the circumstances causing the invalidation of such right. The Court noted that it is the only example of the so-called actio popularis – a legal remedy that was introduced to the Polish Industrial Property Law because of the importance of public interest. This action is available to any person with the capacity to be a party in the administrative proceedings, even if such person is not directly interested in the matter. This judgment is not final yet.

Trade mark law, case no. Sp. 133/08

November 10th, 2010, Tomasz Rychlicki

Wyborowa S.A. from Poznań filed a request for invalidation of the right of protection for the word-figurative trade mark WYBORNA ŻYTNIA EXCELLENT RYE VODKA BLENDED R-172468 and word-figurative trade mark WYBORNA EXCELLENT VODKA R-172469, both applied for on 1 October 2002, for goods in Class 33 such as alcoholic beverages. The right of protection was granted to PPS Polmos S.A. Warszawa. Wyborowa S.A. argued that there is a confusing similarity to the WÓDKA WYBOROWA R-151215 trade mark and that the application of the both signs was made in bad faith.

R-151215

Wyborowa S.A. relied on an agreement regarding the division of trade marks that were registered for the stated owned Polmos company before socio-economic transformations that have occurred in Poland after 1989. Both WYBORNA R-64663 and WYBORNA WÓDKA R-64855 trade marks were transferred to PPS Polmos S.A. Warszawa.

R-64855

These trade marks received protection in the 90’s, and in 2003, Wyborowa S.A. requested the PPO to decide on the lapse of the right of protection. At the first stage, the PPO dismisses the case due to the lack of legitimate interests of Wyborowa S.A. The Company filed a complaint against this decision and the Voivodeship Administrative Court in its judgment of 12 July 2006 case file VI SA/Wa 704/06 annulled the contested decisions and ruled them unenforceable. The Adjudicative Board of the Polish Patent Office in its final decisions of 28 April 2008 case number Sp. 285/06 and Sp. 543/06 decided on the lapse of the protection.

R-64663

PPS Polmos Warszawa applied again for the right of protection for very similar labels, hence Wyborowa S.A. filed a notice of opposition (dismissed by the PPO) and the request for invalidation,

R-172468

The Adjudicative Board of the Polish Patent Office in its decision of 8 October 2010 case no. Sp. 133/08 invalidated both questioned trade marks. The PPO held that the application of those trade marks was made in bad faith, which was intended to circumvent the law. This was because these signs have been applied for during the proceedings of on the lapse of the above trade marks R-64663 and R-64855.

R-172469

The PPO ruled that Polmos Warszawa still wants to continue to maintain a monopoly and block other entrepreneurs to the use of the Wyborna sign. This is kind of a precedent decision, because the PPO probably for first time in its case-law considered that the re-application for similar signs is contrary to the principles of merchant’s honesty, as a matter of acting in bad faith. The decision is not final yet.

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 808/10

July 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its order of 28 June 2010 case file VI SA/Wa 808/10 ruled that according to article 143 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, the Polish Patent Office shall publish a trademark application immediately after the expiration of three months from the date of filing of that application. As from the date of publication any third parties may acquaint themselves with the trademark determined in the application and with the list of the goods for which the mark is intended. They may also submit to the PPO their observations as to the existence of grounds that may cause a right of protection to be denied. Therefore, anyone has the right to submit comments to a trade mark application, but filing such comments does not make someone a party to the examination proceedings. These observations are only material that will be taken into consideration when examining the trade mark application

The VAC also noted that according to article 246 of the IPL any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a right of protection within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, and according to article 164 of the IPL, the right of protection for a trademark may be invalidated in whole or in part at the request of any person having a legitimate interest therein, provided that that person is able to prove that the statutory requirements for the grant of that right have not been satisfied. In such cases, the person is a party to the proceedings. This case concerned Gobired trade mark R-222675 owned by Przedsiębiorstwo Handlowo-Usługowe MAREL PLUS Leszek Marcinowski from Gdańsk.

Trade mark law, case II GSK 608/09

July 13th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 19 March 2009 case file VI SA/Wa 1888/08 ruled that the consequence of the transfer of trade mark rights to another party, is that its previous owner is not allowed to continue to invoke the claims of the infringement of these trade marks. However, such a possibility is not excluded if the assignment of the trade mark rights will include appropriate provisions authorizing the previous owner of the trade mark to continue proceedings in which it claimed it has rights to assigned trade marks.

R-149940

The Supreme Administrative Court in its judgment of 13 May 2010 case file II GSK 608/09 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that at both the opposition proceedings as referred to in article 246 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, that served as the basis for the decision to refuse to grant a right of protection, and subsequent proceedings before the Polish Patent Office under litigation for invalidation of a right of protection, due to the recognition by the proprietor of a trade mark that the opposition is to be unfounded, the applicant who wants to support the opposition does not have to show the legal interest.

Article 246
1. Within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right in registration.
2. The opposition referred to in paragraph (1) may be filed on the same grounds, on which a patent, a right of protection or a right in registration may be invalidated.

This case concerned the invalidation proceedings of the trade mark CARLO BOSSI R-149940 that was registered for goods in Class 3 by KIVI Dr Krzysztof Słoń from Izabelin Laski.

Trade mark law, case II GSK 335/09

March 24th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 4 November 2008, case file VI SA/Wa 1529/08 dismissed the complaint brought by Fashion Group Sp. z o.o. against the decision of the Polish Patent Office (PPO) of 2008, case no. Sp. 504/06, on the discontuance of proceedings in case of the invalidation of the right of protection granted for OSKARY MODY R-178091 trade mark.

Fashion Group based its legal interest on provisions on the freedom of establishment and the existence of its exclusive right to OSKARY MODY R-180722 trade mark. Fashion Group also claimed that MEDIA SUKCES s.c., the owner of the questioned trade mark, published press information indicating alleged violation of its trade mark rights by Fashion Group, which involved a risk of legal proceedings.

The PPO and the VAC denied the existence of legal interest on Fashion Group side. The company filed a cassation complaint. The Supreme Administrative Court in a judgment of 9 February 2010, case file II GSK 335/09, ruled that a competitor has a legal interest in seeking the invalidation of the same registered trade mark as his right of protection, if the owner of such an identical trade mark took any action based on demanding for the cease and desist of use, or negating the right of its competitor.

See also “Trade mark law, case II GSK 774/08” and “Trade mark law, case II GSK 503/08“.

See also Berenika Depo’s article “Same procedure every year: locus standi as an effective barrier to trade mark revocation for non-use in Poland” published in Journal of Intellectual Property Law & Practice, 2010 5(1):55-64; doi:10.1093/jiplp/jpp186.

Trade mark law, case II GSK 774/08

July 20th, 2009, Tomasz Rychlicki

In June 2005, Societe Des Produits Nestle S.A asked the Polish Patent Office to make a decision on the lapse of the right of protection for “3in 1” R-90234 trade mark owned by “MOKATE” sp. z o.o. from Zory. The request was based on article 28(1) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with later amendments.

The right deriving from registration of a trade mark shall expire if the person entitled has not used the mark within a period of three consecutive years in the Republic of Poland.

The request was also based on article 169(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.

1. 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,
(…)
2. In the cases referred to in paragraph (1), the Patent Office shall make a decision on the lapse of the right of protection for the trade mark at the request of any party having a legitimate interest therein.

The request was based on non-use of “3 in 1” trade mark. Mokate filed a motion asking the PPO to reject Nestle’s request. The motion was based on the lack of legitimate interest on Nestle’s side. The PPO agreed with Mokate’s argument. Nestle filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in its judgment of 3 December 2007, act signture VI SA/Wa 1036/07 rejected Nestle’s complaint. The company filed a cassation complaint to the Supreme Administrative Court. The SAC in its judgment of 12 March 2009, act signature II GSK 774/08 held that conditions of legitimate interest are based on two levels — procedural — because it is justifying the initiation of administrative proceedings in a particular matter and “substantive”, as it results from the provisions of the law that apply to certain rights and obligations of a person (legal or natural). Although the substantive law is the source for the legitimate interest but the legal interest as a condition that justfies the initiation of the procedure for declaration on the lapse of the right of protection for the trademark is primarily a category of administrative procedure – one of the principles of this proceedings as to its proper initiation. The cassation complaint was rejected.

The SAC ruled also that it was uncontested that the First Council Directive left Member States free to establish procedural rules. The requirement of legitimate interest included in article 169(2) the IPL only entitles a party to initiate the administrative proceedings on the lapse of the right of protection for a trade mark, but does not guarantee such applicant that the PPO will issue a decision that is favourable to him, because the PPO shall issue a decision on the lapse of the trade mark rights if it finds the fulfilment of the substantial prerequisites to the lapse, and not the infringement of the legitimate interest. Since then the provision of article 169(2) are only applicable only to a right to file a request for a decision on the lapse of the right of protection for a trade mark for the reasons referred to in section 1 of article 169 being the substantial prerequisites, the requirement to demonstrate a legitimate interest can not be understood as an additional substantial prerequisite for deciding on the lapse of trade mark rights. Such assessment is not changed by the fact that, as the court already stated, the legitimate interest is the normative category of the substantive law.

In the Polish administrative law the legitimate interests requirement creates the concept of a proceedings party. This issue has been dealt similarly in the law of industrial property, including a prerequisite to request the Polish Patent Office to take a decision declaring the right of protection for the trade mark.

The legitimate interest prerequisite has two grounds – procedural because it justifies the initiation of the administrative proceedings in a particular case and substantive, because it results from the provisions of substantive law that apply to certain rights and obligations of an entity. Although a source of the legitimate interests lays in the substantive law, the legal interest as a condition requesting the PPO to issue a decision declaring on the lapse of the right of protection for the trade mark lapsed is primarily a category of administrative procedure – one of the principles of this proceeding as to its proper initiation.

The issues on legal interest are both regulated in the procedural law (including the administrative proceedings that apply to trade mark cases) and these are also the normative category of the substantive law. The source of the legal interest is the substantive law. If the source is the substantive law then the Directive should apply. However the SAC consistently refuses to refer this matter to the Court of Justice.

See also “Trade mark law, case II GSK 309/07“.

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 VI SA/Wa 1315/07

June 21st, 2009, Tomasz Rychlicki

The Italian company Arnoldo Mondadori Editore S.p.A. the owner of the word-figurative CTM GRAZIA no. 001714146, requested the Polish Patent Office to invalidate the right or protection for the trade mark GRACJA MAGAZYN DLA KOBIET R-121886 owned by the Polish company. The PPO dismissed the request and decided the Arnoldo Mondadori Editore S.p.A. did not prove it has legal interest in such proceedings. The Italian company filed a complaint against this decision.

R-121886

The Voivodeship Administrative Court in its judgment of 19 December 2007 case file VI SA/Wa 1315/07 dismissed it. The Court noted that in the request for the invalidation of the trade mark, the Italian company expressed its intention to start its activities in Poland under the Community trade mark and this justified its legal interest. However, the Court held that such intention was not enough to find legal interest in seeking the invalidation. Any costs incurred by the Company in connection with the intention of entering the Polish market cannot be regarded as an argument to justify a legal interest. Each entrepreneur starting its business must expect to incur such costs. The preventive removal of any competitor, prior to the actual start of own business on such market, is deemed as factual interests, and as such, does not give a status of a party to the proceedings.

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 Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent 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 in Warsaw in its judgment of 12 October 2008 case file VI SA/Wa 1486/08 fully agreed with the PPO’s decision and dismissed the complaint.

Trade mark law, case II GSK 503/08

May 6th, 2009, Tomasz Rychlicki

The Polish company Gemi from Karczew filed before the Polish Patent Office a request for invalidation of the right of protection for the trade mark PLANTAGINIS R-105263. The Supreme Administrative Court in its judgment of 20 November 2008 case file II GSK 503/08 ruled that it is usually assumed that legitimate interest is the normative category of the substantive law and its source is the substantive law. On this basis the party of an administrative proceedings is entitled to request to specify his or her powers and duties or require an administrative court or body to perform an examination of a legal act or acts in order to protect him or her against violations that was made by this legal act or acts and to lead to a situation that it is consistent with the law. The legitimate interest may also derive from legal norms not only belonging to the administrative law. The confirmation of legitimate interest is always due to the likely connection between the norm of the substantive law and the situation of legal entity to the effect that the act of application of this legal norm (eg, an administrative decision) may affect the legal position of this entity in the field of the substantive law. The SAC also agreed with the opinion of academics that there aren’t any universal definition of a legitimate interest in the field of industrial property law that would include complex situations to justify the submission of the request for invalidation of an exclusive right. The Court noted that the case law indicates the provisions of Article 20 of the Constitution of the Republic of Poland of 2nd April 1997 as published in Dziennik Ustaw (Journal of Laws) No. 78, item 483.

A social market economy, based on the freedom of economic activity, private ownership, and solidarity, dialogue and cooperation between social partners, shall be the basis of the economic system of the Republic of Poland.

The Court also pointed out to Article 6(1) of the Act on Freedom of Economic Activity (in Polish: ustawa o swobodzie dzialalnosci gospodarczej) corresponding to the content of Article 5 of the Act of 19 November 1999 on Law of Economic Activity (in Polish: Prawo dzialalnosci gospodarczej), published in Dziennik Ustaw (Journal of Laws) No. 101, item 1178, as amended.

The assumption, conduct and termination of economic activity shall be free to all on an equal-rights basis, subject to conditions determined in provisions of law.
2. The public administration authority shall neither demand nor make its decision in the matter of the assumption, conduct, or termination of economic activity by an interested party conditional upon satisfaction by this party of additional conditions, including without limitation on the submission of documents or disclosure of information other than that set out in provisions of law.

These are the basis for deriving the legitimate interest for the party seeking for the standing in the proceedings for the lapse or invalidation of a right of protection for a trade mark. When deriving the legitimate interest from the aforementioned legal regulations in case of the invalidation proceedings of a trade mark it is necessary to demonstrate why and how the right of protection for the trade mark PLANTAGINIS R-105263 affect on the legal position of Gemi Company as an entrepreneur. Each entrepreneur has the right to a trademark if the right is not in conflict as to the form, and the period of validity of the previously acquired trade mark right of the same sign. It was necessary to demonstrate that the GEMI’s legitimate interest is relevant to its legal position, because it is current, real, direct and their own (these are the most common elements and features of the legitimate interest), such as verifiability of the legitimate interests and the possibility of obtaining specific benefits. In such cases it concerns the so-called “reflections right” which is creating the legal position of a party not directly, but by a decision of the Polish Patent Office which is “taking back” a right of protection for an earlier trade mark granted to another company.

The SAC dismissed the cassation complaint because it has found that GEMI company did not file its request for invalidation of the right of protection for the trade mark PLANTAGINIS R-105263 in order to obtain the right of protection for the disputed mark for its own. It also did not demonstrate the existence of any obstacles to conduct its business during the sale of goods marked with the disputed trade mark.

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 II GSK 385/08

November 14th, 2008, Tomasz Rychlicki

On 26 June 1996 the Polish company “Sniezka” Chłodnia from Częstochowa applied for the figurative trade mark in Class 30 for goods such as ice creams. The graphic represented a black boy’s head. On 10 September 2001, the Polish Patent Office granted the right of protection R-132332.

R-132332

On 31 July 1998, the Lodmor company from Gdansk applied for word-figurative trade mark “calypso lody smietankowe waniliowe LODMOR” Z-190131 in class 30 for goods such as ice creams, ice cream powder, ice cream binders. The PPO rejected Lodmor’s application justyfing its decision on priority of the “Sniezka” company’s trade mark.

Z-190131

Lodmor filed a request for trade mark invalidation. The company from Gdańsk claimed that “Sniezka” illegally appropriated a sign of a black boy’s head, which was put on Calypso ice creams in the ’70s and ’80s by companies that were part of the Union of the Freezing Industry (Lodmor is a legal successor of one of them). The PPO has invalidated “Sniezka” trade mark in 2006. The Office ruled that this sign was registered in contrary to principles of merchant’s honesty because the mark was already used for a long time by other entrepreneurs.

“Sniezka” Chłodnia company appealed. The Voivodeship Administrative Court in Warsaw in its judgment of 17 October 2007 case file VI SA/Wa 1005/07 held that Lodmor had no legal interest in filing a request for trade mark invalidation. The Court annulled PPO’s decision. The VAC held that the concept of legal interest in invalidation proceedings can not be derived from the fact that one company applies for a trade mark protection and there is an obstacle in the form of earlier registration. Such conclusion would lead to negation of principles that are the basis for granting rights for trade mark protection. In this case the interest involved only economic issues.

Lodmor filed a cassation complaint. The Supreme Administrative Court in its judgment of 23 October 2008, case file II GSK 385/08 agreed with Lodmor’s arguments that VAC only referred to the trade mark application and it did not consider Lodmor’s legal interest. The SAC already issued decisions and opinions as regards the breach of principles of mercantile honesty and the bottom line of each ruling was that, in specific circumstances, a legitimate interest of a competitor may be found, as it was in Lodmor’s case. The Court held that every entrepreneur has the right to designate its products and services, with a trade mark, if it does not remain in conflict as to the form, duration and territorial aspect, with the absolute right that was previously obtained by another entity. An entrepreneur has a legal interest in the request for invalidation of the right of protection for a trade mark on the basis of circumstances provided in the request and conditions included in such a motion if the right of protection was granted in violation of the statutory requirements. The relevance and application of these conditions shall be assessed in proper proceedings. Therfore, the SAC returned the case to VAC for further reconsideration.

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.

Procedural law, case SA/Wr 1843/95

June 13th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its decision of 17 November 1995 case file SA/Wr 1843/95 ruled that according to the provisions of Article 28 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, published in 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, shows clearly that the concept of a party of the proceedings is associated with the legal interest that is interpreted of the indicated administrative regulation of substantive law, which may form the basis for the interest or obligation of given entity. The Court noted that to have a legal interest in the administrative proceedings means the same as to establish a provision of the current law in force, under which the activities of the authority can be effectively requested with the intention of satisfying a need or demand or the cessation or restriction of actions of the authority that are contrary to the needs of the individual. Such a legal interest should be distinguished from the so-called real interest, which is deemed as a situation in which a person is indeed directly interested in settlement of administrative cases, but it can not support its interest based on the currently binding legal regulations which could form the basis for a request to the relevant administrative body. In this case, that person is not entitled to be a party in the administrative proceedings.

Categories: Art. 28 APC | legal interest | Polish Administrative Proceedings Code | Polish Supreme Administrative Court.

Trade mark law, case II GSK 309/07

March 30th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 March 2007, case file VI SA/Wa 1998/06 ruled that the source of legal interest to seek a declaration on the lapse of the right of protection for a trade mark may be general rules of law that create the right of establishment of business activity (article 20 and article 22 of the Constitution of the Republic of Poland). However, any person requesting the Patent Office to make a decision on the lapse of the right of protection for the trade mark must prove, on pain of dismissal of such application, that the disputed trade mark limits business activity of an applicant, or it has negative impact the legal situation of the applicant. This case concerned ION R-110244 and ION WEST R-11020 trade marks.

The court deciding this case was aware that divergent views on the subject of legal interests are presented both in the legal doctrine and the case-law. One part of the legal doctrine and practising lawyers believes that a lack of legal interest justyfies the issuance of a refusal based on the formal reasons, and another part’s view is that in this case, the PPO should take the decision to discontinue the proceedings. The court cited the judgment of the Supreme Administrative Court of 7 September 1989, act signature SA/Ka 441/89 and its critical gloss written by Barbara Adamiak, published in OSP 1991/2/33.

The Supreme Administrative Court in its judgment of 25 January 2008 case file II GSK 309/07 ruled that the request for a referral to the Court of Justice regarding the question whether the article 12(1) of First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks allows Member States to introduce into the national law an additional substantial prerequisite regarding the legitimate interest, limiting the class of persons allowed to seek for a declaration on the lapse of the right of protection for a trade mark that was failed to be put to genuine use to those who are able to demonstrate their interest and depriving such possibility the business entities having the actual interest, including economic one, is unfounded.

Trade mark law, case VI SA/Wa 1705/05

March 11th, 2006, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 2 March 2006, case file VI SA/Wa 1705/05 decided on trade dress and 3D trade mark TERRAVITA R-142204 owned by Terravita Holding Establishment. The Court ruled that according to the provisions of Article 30 of the Act on 31 January 1985 on Trade marks (Journal of Laws No 5, item 17 with subsequent amendments), a legal interest to demand the invalidation of a trademark registration is afforded to an entity which derives such right from a competence to fill for trade mark registration, use of a trade mark, or to demand the invalidation of a trade mark registration for the sake of the collision with its own rights.

R-142204

The Court also noted that there is a presumption of good faith and bad faith, and it has to be proven. There is an assumption that someone is acting in bad faith if he or she has the awareness of discrepancy of the situation with the law or as a result of his or her negligence in knowledge about the legal situation. In accordance with the well established doctrine, practice and case law, a trade mark according to Article 7 and Article 9(1) pt 1 and 2 of the TMA, should be examined as a whole. It is not allowed to test only one element of the complex sign, for instance the figurative element, without taking into the consideration of the word elements of the complex sign, or doing it insufficiently. Therefore, if the Polish Patent Office examines individual elements of a sign, it should in next, put them together and draw the final conclusions. See also “Trade mark law, case II GSK 247/06“.