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Archive for: likelihood of confusion

Trade mark law, case II GSK 1096/13

December 8th, 2014, Tomasz Rychlicki

Dansk Supermarked A/S, the owner of word trade marks NETTO and word-figurate trade mark NETTO R-114747 filed to the Polish Patenet Office a notice of opposition to the final decision on the grant of a right of protection for the word-figurative trade mark NETO R-227788 that was registered for the goods in Classes 7, 11, 19, 20, 21 and services in Classes 35 and 42. The opponent pointed out that the services in Class 35 are identical to these that NETTO trade marks were registered for, and are directed to similar consumers through similar channels. Furthermore, the services in Class 35 are complementary to the goods and services from other classes. Dansk Supermarked A/S also argued that the compared trade marks are very similar. The dominant element of the sign in question is the word “NETO”, which is crucial for the perception of the character, and the figurative element is of secondary importance. The word “NETO” is entirely contained in the opposing signs, therefore the compared trade marks are “substantially similar” and that the average consumer may mistakenly associate the signs, and there is a real risk of misleading the public as to the origin of goods and services.

The owner, Polish company Galicja Tomaszek sp. z o.o., argued that the chain stores NETTO offer both food and industrial goods, and in this case, the opposing sign is used for the determination of the store itself or chain of stores. In contrast, the disputed mark is used to designate the goods.

The Polish Patent Office invalidated the right of protection. The PPO found that trade marks at issue are similar, and pointed out that all the goods in Classes 7, 11, 19, 20 and 21, are covered by the services included in class 35, and relate to the sale of these goods. Galicja Tomaszek sp. z o.o. filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 19 December 2012 case file VI SA/Wa 1808/12 dismissed it. The Court ruled that the term “providing a service” or “service” itself have no material content in the sense that the sign may be placed only on the elements used to provide a particular service, while a trade mark can be assigned to the goods, due to their material nature, and the consumer may directly related to the goods to which a sign is assigned. The similarity of the goods/services happens when the goods (services) covered by the earlier mark and the goods (services) covered by the later mark have the same purpose and method of use. Galicja Tomaszek sp. z o.o. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 18 September 2014 case file II GSK 1096/13 dismissed it.

Trade mark law, case XVI GCo 204/13

September 30th, 2013, Tomasz Rychlicki

On Augut 2013, Polish telecom Polkomtel sp. z o.o. started an advertising campaign of its mobile Internet access services. In a short movie, a girl named Basia is starting new life by dumping her boyfriend and moving to a new flat with an Internet access based on LTE technology. She mentions that her boyfriend had Internet access provided by Telekomunikacja Polska S.A. under the brand name Neostrada. She is very happy about the changes. The ad ends with the statement that Internet provided by Plus (brand name of Polkomtel) is faster from Neostrada. This comparison is based on the ranking provided by SpeedTest.pl of July 2013.

On 9 September 2013, Telekomunikacja Polska requested the District Court in Warsaw to issue a preliminary injuntion against Polkomtel, in order to prohibit acts of unfair competition and trade mark infringement of the word trade mark NEOSTRADA R-182762. Telekomunikacja noted that Polkomtel is one its major competitors on the Polish telecommunication market. The Company argued that Polkomtel infringed its trade mark rights by taking unfair advantage of reputation and distinctive character of the NEOSTRADA brand, and the advertising movie was comparative advertising contrary to good practices, and as such, should be deemed as unfair competition.

The District Court in Warsaw in its order of 23 September 2013 case file XVI GCo 204/13 dismissed the request. The Court held that premises to secure the claims are based on substantiation of claims, i.e. on providing prima facie evidence of the infringement and legitimate interest in granting the order. According to the Court, Telekomunikacja did not provide evidence on reputation of its trade mark and Polkomtel did not infringe the right of protection for NEOSTRADA, because this sign was only used to specify the service to which it relates. The word was used as a name for a given service, not as a trade mark. The Court noted that advertising that allows to identify, directly or indirectly, the competitor or products or services offered by the competitor, described as “comparative advertising”, should be deemed the act of unfair competition if it is contrary to good practices. However, the short movie clip published by Polkomtel is not in any way contrary to such practices, because it is not misleading and it does not affect market decisions as to the purchase of goods or services. The Court agreed with the decision of the President of the Office of Competition and Consumer Protection of 6 August 2009 case no. DDK 4/2009, according to which, advertising is deemed as misleading when a consumer gets false idea of the goods or services, and misleading information influence the decision to purchase these products.

See also “Trade mark law, case XXII GWo 68/12“.

Trade mark law, case II GSK 730/12

September 17th, 2013, Tomasz Rychlicki

On May 2008, the Polish Patent Office granted the right of protection for the word trade mark COOL RIVER R-205208 in Class 3. This sign was applied for by the Polish company Firma Handlowa A & S PARFUME FACTORY Marek Asenkowicz from Katowice.

ZINO DAVIDOFF SA filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. DAVIDOFF argued that COOL RIVER is similar to its trade marks such as DAVIDOFF COOL WATER R-71968, COOL DIVE IR-0850699, Cool Water IR-0615313. All these signs are intended to indicate the same goods as the questioned trade mark. DAVIDOFF also claimed that its trade mark COOL WATER IR-0812386 is reputed one. Moreover, the trade mark COOL RIVER has been applied for in bad faith, because A & S PARFUME FACTORY knew about the existence of earlier marks owned by DAVIDOFF. The sale by A & S of perfumes in almost identical packagings, as packagings used by DAVIDOFF was the irrefutable evidence of the use of reputation of DAVIDOFF’s trade marks and the application of COOL RIVER in bad faith.

IR-0615313

The Adjudicative Board of the Polish Patent Office dismissed the request in its decision of 7 March 2011 case Sp. 483/09. While considering the visual and aural similarity of trade marks Cool Water, Davidoff Cool Water and Davidoff Cool Water Wave in relation to the questioned trade mark COOL RIVER, the PPO noted that all the words used in these trade mark have the origin of the English language. However, regardless of whether they will be pronounced in accordance with the spellings of the Polish language or in English, they are different in the visual and aural aspects due to the different verbal elements – WATER and RIVER. Furthermore, the PPO ruled that the word COOL, being the same element in all signs, is a common and popular word associated with something cold. The word WATER differs from RIVER in the visual aspect, and their pronunciation is different. The PPO also found that there were no circumstances indicating that A & S applied for its trade mark in bad faith. The burden of proving bad faith was on DAVIDOFF. At the same time, the overall assessment of the circumstances surrounding the consciousness of A & S at the date of trade mark application will decide on its bad faith. In the opinion of the PPO, such circumstances did not occur. Evidence such as the flyer entitled “list of alternative scents”, similar perfume packagings used by A & S as well as printouts from the website showing COOL WATER and COOL RIVER perfumes, were not sufficent to prove bad faith. Davidoff filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 January 2012 case file VI SA/Wa 2051/11 dismissed it. The Court agreed with the PPO that the trade marks are not similar. The VAC also held that the understanding of bad faith should be based on the provisions of the Polish Industrial Property Law. Bad faith occurs if someone applies for the trade mark in order to block other application or in order to block the use of the sign by other entity who uses this trade mark in the market or to take over the company’s market position. Bad faith also exists when someone is filing for a trade mark for speculative purposes, and there was no intent to use the applied sign, and in order to get benefits from the entity that owns such trade mark. Bad faith trade mark application happens when the applicant without due care or being aware, applies for a sign in violation of the rights of another person, or when the applied trade mark is contrary to morality or fair trade practices.

The Supreme Administrative Court in its judgment of 3 September 2013 case file II GSK 730/12 dismissed the cassation complaint filed by ZINO DAVIDOFF SA.

Trade mark law, case II GSK 2323/11

July 30th, 2013, Tomasz Rychlicki

CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER ROSS R-190192 registered for Firma Handlowa A & S PARFUME FACTORY Marek Asenkowicz, for goods in Class 03 such as perfumes products, toilet water, lavender water, colognes, deodorants for personal use. CARTIER claimed that the contested registration infringes on its company name and the word-figurative trade mark CARTIER R-59579. CHATIER ROSS is detrimental to the reputation of CARTIER’s signs and leads to a weakening of their attractiveness and may cause the loss of trust among buyers of CARTIER’s products.

R-59579

A & S argued that trade marks in this case are not similar both visually and semantically, because the word “chatier” in French means “smooth/polished” and the word “Cartier” indicates the manufacturer. The Polish company cited the judgment of the Supreme Administrative Court of 22 October 2004 case file GSK 811/04 concerning the similarity of the trade marks WELT and WEST IR-621660. A & S also noted that the documents submitted by CARTIER do not prove the reputation of the sign “Cartier”, and pointed to the differences in price of goods bearing both trade marks.

The Polish Patent Office found similarity both of goods and signs, and invalidated the contested registration. While analyzing the evidence on the reputation of the sign “Cartier”, the PPO took into account press articles on the position of the brand in the Polish market and the perception of the consumers. It was irrelevant that the parties use their trade marks to designate goods that differ significantly in price. The PPO ruled that the price of such goods may vary depending on the business strategy of the owner. A & S filed a complaint against such decision. It was dismissed by the Voivodeship Administrative Court in its judgment of 6 July 2011 case file VI SA/Wa 867/11. A & S filed a cassation complaint, but the Supreme Administrative Court in its judgment of 7 March 2013 case file II GSK 2323/11 dismissed it.

CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER COOL MEN R-199458, and the PPO followed the request. A & S complaint was dismissed by the Voivodeship Administrative Court in its judgment of 17 October 2011 case file VI SA/Wa 866/11, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 191/12 dismissed the cassation. The same outcome was in case of the invalidation of the right of protection of the word trade mark CHATIER PURL R-199457 that was owned by the A & S. The Voivodeship Administrative Court in its judgment of 6 September 2011 case file VI SA/Wa 865/11 dismissed the complaint against the decision of the PPO, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 97/12 dismissed the cassation.

Trade mark law, case I ACa 1268/12

July 4th, 2013, Tomasz Rychlicki

Wytwórcza Spółdzielnia Pracy SPOŁEM (WSP SPOŁEM) from Kielce (the capital city of the Świętokrzyskie Voivodeship) sued ROLESKI Sp. J. for the infringement of word and figurative trade marks R-197616, R-170401, R-123588 and R-193780 and unfair competition torts/delicts. Both Polish companies produce different mayonnaise products that are sold in jars of a similar capacity. WSM Społem is a manufacturer of “Majonez KIELECKI”. In 2008, ROLESKI produced mayonnaise in a package bearing the designation “Świętokrzyski”. The label of this package was modified twice, by removing the word “Świętokrzyski” and by replacing it, during courts’ proceedings, by the word “Regionalny”. WSP SPOŁEM asked the District Court in Kraków to secure the claims and to issue preliminary injunction in order to prohibit ROLESKI, until the final decision is rendered, the sale of mayonnaise in a jar with a label containing a yellow background, a centered white box in the shape of an ellipse with a green border, and a green jar lid, and a round yellow sticker connected with jar’s side, and to seize and retain, until the final decision is issued, of all products held by the defendant in the form of mayonnaise packages with labels containing centered yellow background, a centered white or yellow field in a shape similar to an ellipse, framed or underlined by a green or red line, with a green round jar lids and a yellow label (band) connected to jar’s side, and also containing any of the elements described above.

R-123588

ROLESKI requested the Court to dismiss the suit. The Company argued that it does not counterfeit products of WSP SPOŁEM as it manufactures own products bearing reputable trade mark, which in consequence, eliminates not only identity, but also the similarity of products. ROLESKI noted that if the two parties compete under their own brands, there is no harm to the reputation and distinctive character of their trade marks. According to ROLESKI, WSM Społem mistaken reputation of the registered trade mark with the concept of the reputation of a product. As a result, it does not prove the reputation of the figurative mark R-197616, but generally a particular product “Majonez KIELECKI”. WSM by designating its product with a word “Majonez KIELECKI” indicates only its generic name and determine the place of origin, and therefore such trade mark is devoid of any distinctive character, as opposed to the trade mark used by ROLESKI, that is a distinctive sign.

R-193780

The District Court in Kraków in its judgment of 23 May 2012 case file IX GC 86/10 found that graphics of mayonnaise packages produced and marketed by ROLESKI were modeled on the graphics of mayonnaise package produced and marketed by WSP SPOŁEM. The Court noted that similarities outweighed the differences. The Court made findings of facts on the basis of documents submitted by the parties, as well as the testimony of witnesses and the opinion of an expert witness, except for the part where the expert speaks about the intentions of the designer’s of ROLESKI’s trade marks. The Court asked the expert on the likeness of packages containing the elements of trade marks and the impact of possible similarity on the likelihood of consumer confusion. ROLESKI filed an appeal complaint. The Court also found that ROLESKI used the word “Świętokrzyski”, but the office of the company was located in another voivodeship (Małopolska Voivodeship, in the Tarnów community), which was deemed as an act of unfair competition.

R-197616

The Appeallate Court in Kraków in its judgment of 15 January 2013 case file I ACa 1268/12 dismissed it and ruled that the District Court has made the appropriate findings. The Court noted that the evidence and testimony of expert witness allowed for a clear and comprehensive answer to the question of similarity of the goods, understood as a whole, including packaging, manufactured and marketed by the parties, taking into account changes made by ROLESKI in the appearance of mayonnaise packaging produced by the Company from Tarnów. The Court confirmed that by the use of the word “Świętokrzyski” together other elements similar to those attributed to WSM Społem, ROLESKI has exploited a set of associations created by WSM Społem for the product, which is mayonnaise with a specific package. The use of the additional word “Świętokrzyski” perpetuated these associations and allowed the Court to treat ROLESKI’s action as an act of unfair competition. ROLESKI appealed directly to the reputation of the product of WSM Społem by invoking the name of the capital of Świętokrzyskie region. The Court acknowledged similarity of the vast of words and figurative elements of packaging. All the elements visible on the packaging of both parties, although they include other wordings by the use of the same color and compositional arrangement lead to customer confusion as to the origin of the goods, and it also constitutes an act of unfair competition.

Trade mark law, case II GSK 2324/11

October 5th, 2012, Tomasz Rychlicki

Julius Sämann Ltd., the owner of the figurative trade mark WUNDERBAUM IR-0579396, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark Forest Fresh R-183901 owned by S&S Smiczek & Smiczek Hanna Smiczek. Both trade marks were registered for similar goods in Class 5, mainly air freshening products. Julius Sämann Ltd. claimed that because of the similarity of goods there is a risk of misleading the public, in particular by evoking associations with the earlier mark. The company provided also evidence on reputation of its trade mark.

iR-0579396

The Polish Patent Office invalidated the right of protection. The PPO decided that three required conditions had to be cumulatively met in this case: i) the reputation of the earlier mark, ii) the similarity or identity of signs, iii) if it without due cause would bring unfair advantage to the owner of the later trade mark or be detrimental to the distinctive character or the repute of the earlier trademark. The PPO noted that the case law distinguishes between absolute and relative methods of assessing reputation. The first one considers knowledge of the mark and takes into account primarily the percentage of a certain degree of its recognition on the market. The relative method emphasizes different criteria, including the degree of the recognition of the trade mark, the market share in terms of quantity and value of goods sold, the extent and duration of product advertisements marked by the sign, territorial and temporal scope of its use, licenses granted, quality of the goods, the value of the sign in the evaluation of independent financial institutions, the size of expenditures incurred in connection with the promotion of trade, as well as relationship price of substitute goods. The evidence material can be public opinion polls, prizes and awards, press releases, ratings, reports, invoices and other commercial documents, as well as various promotional materials. The Polish Patent Office has adopted a mixed methodology in this case, and ruled that both the evidence on reputation, that was claimed and established before the date of application of the contested trade mark, as well as documents from the later period, strengthen the recognition of reputation of the trade mark WUNDERBAUM IR-0579396. The PPO decided that both trade marks are similar in visual, aural and conceptual aspects. The PPO noted that the market presence and existence of a trade mark which consumers associate with reputation of another sign, harm the interest of the owner. S&S Smiczek & Smiczek Hanna Smiczek filed a complaint against this decision.

R-183901

The Voivodeship Administrative Court in Warsaw in its judgment of 2 June 2011 case file VI SA/Wa 334/11 dismissed it. The Court agreed with the the assessment of the PPO, and repeated that an entrepreneur, who for the goods of the same type, chooses a sign that is similar to a trade mark with earlier priority, given that there is an infinite number of signs to be selected, acts at its own risk. S&S Smiczek & Smiczek Hanna Smiczek brought a cassation comaplaint.

The Supreme Administrative Court in its judgment of 10 July 2012 case file II GSK 2324/11 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that the important drawback of the contested judgment and the decision of the PPO was the assumption on the similarity of the opposed trade marks that was based on the mere fact of the use in their visual aspect, a form of tree, without trying to examine whether the different presentation, including the type and shape of the tree, used in these signs, allowed for the adoption of the view that there exists the similarity of the signs. As a result, the Polish Patent Office, followed by the VAC, accepted the monopoly (exclusiveness) of the company to use very idea of the tree element in its trade mark. The SAC recommended that the VAC should also take a stand on the consequences of the fact that S&S Smiczek & Smiczek Hanna Smiczek used its trade mark for a considerable period of time from 2002. After almost 5 years, Julius Sämann Ltd. initiated a civil action against the S&A. The civil proceedings with regard to trade mark infringement ended before the Supreme Court in its judgment of 14 October 2009 case file V CSK 102/09. The Supreme Court dismissing a cassation appeal filed by Julius Sämann Ltd., based on the argument that long-standing and undisturbed use of the sign in question, in connection with the principle venire contra factum proprium, according to which, if the party continued at a specific practice, it can not rely on its illegality, if other entity accepted such practice in good faith and it could suffer injury as a result of the changes. The application of this rule would come into play especially in a situation, if after the reexamination of evidence, the similarity of opposed signs has been established, and there was not any proof of bad faith on S&S side. The argument that there was bad faith requires evidence and proof, because good faith is presumed. Whether, in connection with long-term use, the S&S trade mark has acquired distinctiveness under average conditions of the market, a feature which is required for any sign to be registered, could speak in favor of the principle of venire contra factum proprium. In addition, marking the goods produced by S&S with its own trade mark, which are the goods of the same kind as products of Julius Sämann Ltd., undoubtedly positively affected the overall demand for such goods on the marker. Therefore, the invalidation of S&S trade mark in situation of its use in good faith, could easily lead to the acquisition of the customers of S&S by Julius Sämann Ltd., without incurring the costs which were attended by S&S in the promotion of the sign, The Court found it difficult to accept. The SAC also held that it should be borne in mind that the right of protection for a trade mark, as every object in the closed list (numerus clasus) of property rights, is admittedly an absolute personal right effective against all (erga omnes), however, this right is not subject to absolute protection. In the light of the general principles for the exercise of property rights as defined in the Polish Civil Code, the boundaries of this right are defined in the Acts and the rules of social coexistence. The Polish Industrial Property Law also refers to these rules. For these reasons, the circumstances giving rise to the allegation of the infringement of the principle of venire contra factum proprium, are one of the limits to the exercise by the owner of its legitimate socio-economic use of the right of protection that derives from the registration of the trade mark. Thus, the invalidation proceedings started against the trade mark Forest Fresh R-183901, in violation of the above mentioned principle, may be considered as the abuse of the right of protection for a trade mark by the proprietor of such a right, that is not entitled to the protection.

Trade mark law, case VI SA/Wa 611/11

April 30th, 2012, Tomasz Rychlicki

The Polish Patent Office partially refused to grant the right of protection for the word-figurative trade mark moja historia Z-338905. This sign was applied for PHOENIX PRESS Sp. z o.o. Sp.k. from Wrocław for goods and services in Class 09, 16, 35, 39, 41 and 42. The PPO based its refusal in Class 09, 16 and 41 on the earlier registration of the word-figurative trade mark Moja historia R-187793 owned by WYDAWNICTWO ERA Sp. z o.o. from Straszyn. PHOENIX only agreed that both companies are publishers, but the signs are meant for other goods and are directed to another recipients. Phoenix is a press publisher whose clients are adult women and WYDAWNICTWO ERA is a publisher of school history textbooks (mainly the history of Poland), which customers are students in primary schools.

R-187793

The PPO decided that there exists similarity of signs and goods and services which may lead to consumers confiusion. PHOENIX filed a complaint against this decision. The Company argued inter alia that the PPO could grant the right of protection and it would not deprive WYDAWNICTWO ERA of protection provided for instance in the Polish Act on Combating of unfair competition, if PHOENIX’s trade mark would actually threaten the existence and functions of the trade mark owned by ERA.

Z-338905

The Voivodeship Administrative Court in Warsaw in its judgment of 8 June 2011 case file VI SA/Wa 611/11 dismissed the complaint. The Court ruled that regulations on combating unfair competition are provided in a separate act, and it is justified by both the construction of the Polish legal system and due to the method of regulation. The law on combating unfair competition does not create absolute rights, but only the system of legal claims that provides protection in the event of unwanted and objectionable market behavior and actions (unfair competition delicts or torts), which is a different approach than those adopted in the Polish Industrial Property Law, which are based on the granting of absolute rights (monopolies) by an administrative decision.

Trade mark law, case VI SA/Wa 1236/11

December 6th, 2011, Tomasz Rychlicki

LEK, tovarna farmacevtskih in kemicnih izdelkov filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word trade mark KETOGEL R-190416 registered for Polpharma S.A. for goods such as pharmaceuticals. LEK argued that KETOGEL is similar to its word trade mark KETONAL. The PPO dismissed the opposition, and LEK filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 7 September 2011 case file VI SA/Wa 1236/11 dismissed it. The court noted that in case of the assesment of similarities between trade marks, the number of syllables, their sound and touch have the importance in deciding on phonetic similarity. Visual similarity is assessed in terms of number of words or letters in general, the number of words or letters of the same type, their shape, layout and color. Consequently, a sign containing an altered distinctive element, even if there is some resemblance to other parts, will not be similar. The Court took into account the specificity of the pharmaceutical market, and excluded the likelihood of confusion in this case.

Trade mark law, case VI SA/Wa 211/11

October 6th, 2011, Tomasz Rychlicki

SOREMARTEC S.A. requested the Polish Patent Office to invalidate the right of protection for the trade mark Raffaello Spumante Dolce Sweet Spumante QUALITA SOPERIORE R-182895 registered for Toruńskie Piwnice Win VINPOL Sp. z o.o., currently VINPOL Sp. z o. o.

R-182895

SOREMARTEC claimed that this sign is similar to the renowned series of RAFFAELLO trade marks registered on its behalf, that the application was filed in bad faith, and that this sign is similar to SOREMARTEC’s trade marks to a degree that causes a risk of misleading the public as to the origin of goods. SOREMARTEC noted that it is aware of VINPOL’s word trade mark RAFFAELLO R-87046 applied for registration in 1993 and subsequent word and figurative trade marks that include in their verbal elements the word “Raffaello”. Therefore, the Company did not oppose the coexistence of Raffaello pralines and sparkling wine bearing the label with the word “Raffaello” on the Polish market. However, the disputed trade mark includes the graphic version of RAFFAELLO that confusingly similar to the one that is consistently used by Ferrero for many years on the packaging of Raffaello pralines. The existence of the contested trade mark would be harmful to both the reputation and distinctiveness of its trade marks, as well as it would be unfairly “impersonating” the reputation of its trade marks without the cost of advertising and promotion. To prove the reputation of its trade marks SOREMARTEC submitted a copy of the public poll report entitled “RAFFAELLO Brand Recognition” and a copy of the report “Development of praline market in Poland”, which shows that the brand RAFFAELLO was in the forefront of the most popular brands of sweets in Poland, its advertising was one of the most remembered and associated advertising of pralines, and Raffaello pralines were among the 10 most frequently purchased and consumed pralines within 6 months preceding the date of the polls. SOREMARTEC also presented a tabulation of the total expenditure on advertising and promotion of Raffaello products in Poland, which have been incurred by Ferrero from 2001 to 2005, and a tabular summary of quantitative results of sales of Raffaello pralines for the period from February 2001 to February 2006. These data indicated that SOREMARTEC has continually expanded and refining the Raffaello’s product line incurring increasing financial investments and extensive marketing campaigns and advertising, so the demand for its products continues to grow. Moreover, SOREMARTEC argued that VINPOL applied for two other trade marks, which verbal element is identical to SOREMARTEC’s trade mark, i.e. MON CHERI R-194468 and word-figurative Mon Cheri CHERRY BRANDY & Delicious 18 High Quality R-203339, and this proves conscious and deliberate action designed to use the reputation of SOREMARTEC’s trademarks. In response, VINIPOL argued that the goods produced by SOREMARTEC, i.e., pralines, and wine are not identical or similar, and therefore there is no risk of misleading the public.

R-203339

The PPO invalidated the right of protection for the trade mark Raffaello Spumante Dolce Sweet Spumante QUALITA SOPERIORE R-182895. The PPO ruled that the circumstances, i.e. several years of presence on the Polish market of Raffaello pralines before the filing date of the contested trade mark, a volume of sales and high percentage of recognition of Raffaello trade marks and its distinctive character, what is the result of both the original form of a trade mark, as well as expenditures on promotion and advertising, confirmed the reputation of Raffaello pralines. According to the PPO, the goods such as alcohol and sweets have many features in common, particularly because they are not consumed for nutritional purposes but for pleasure, such goods can be produced by one company, and may also be sold in a set, or eaten together, which may cause the potential audience to associate sparkling wine with Raffaello pralines. The PPO decided that the contested trade mark, because of its form, will attract the attention of consumers who know the early signs and the goods, in connection with which these trade marks are used. As a result, VINPOL would gain unfair advantage that is mostly based on creating the effect of interest in the goods and services marked with this sign, without having to incur any expenditure on promotion of its goods and services. The PPO has also stressed that the fact that earlier registrations of trade marks for wines with the Raffaello element did not authorize VINPOL to create labels of those products in a form, which resemble them to reputable trade marks, and therefore let VINPOL to benefit from the fact that the recipient seeing the wine Raffaello associate them with products offered by SOREMARTEC that enjoys good reputation among buyers. VINPOL filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 29 July 2011 case file VI SA/Wa 211/11 dismissed it. The Court noted that provisions of the Polish Act on Industrial Property Law does not contain a legal definition of a reputable/renown trade mark, so the Court had to refer to the opinion developed by case law and doctrine. The Court of Justice in its judgment of 14 September 1999 Case C-375/97 Chevy formulated the definition of a renowned trademark for the first time. The doctrine points out that the reputation of a trade mark depends primarily on the quality of the goods bearing it, the financial investment made by the entrepreneur to promote its sign in the media and the period of time required for the customer to establish relationship between a specified quality with goods that bears a sign that represents this high quality (recognition of goods bearing the trade mark on the market). The passage of time needed for the establishment of reputation of the trade mark is different for goods from different industries. The period of time depends on many factors, in particular on the intensity of advertising surrounding the launch of the goods bearing the sign. Furthermore, by creating a reputation of a trade mark, the advertising function of a sign is also strengthen, because such a mark encourages customers to purchase goods bearing it. This function is the result of an advertising of a sign staggered in time, by the use of a mark by an authorized entity and the relationship created in the minds of consumers between a sign with positive associations, particularly with regard to quality, usefulness, of product, the profitability of its acquisitions, and other characteristics relevant to the recipients of goods bearing the trade. Also the domestic case law provides that the reputation of a trade mark is characterized by market share/participation (both quantity and value of sold goods), range and long-lasting of an advertisment of the product bearing a trade mark, territorial and temporal range of use, licences granted for trade mark use, quality of goods bearing a trade mark, value of a given sign in assessment of an independent financial institution, size and extent of expenditures spent on promotion of a mark, the relationship on prices of substitute goods, if (and to what extent) the mark is used by third party, as it was decided in the judgment of the Supreme Administrative Court of 9 May 2008 case file II GSK 506/07, the judgment of the Supreme Administrative Court of 27 February 2008 case file II GSK 359/07.

The Court ruled that the PPO correctly concluded, based on the evidence presented that SOREMARTEC’s trademarks are reputable, and the sign at issue is similar in such a way that consumers can associate these characters with each other, and the use of this trade mark by VINPOL may bring unfair advantage due to the obvious use of the reputation of the trade marks owned by SOREMARTEC. The evidence showed that Raffaello pralines were present on the Polish market several years before the filing date of the contested trade mark, the sales were rising over the years, the high percentage of recognition of Raffaello, and a significant volume of promotion and advertising, created the image of the brand as a symbol of quality, delicacy and elegance. All this confirms the reputation of Raffaello pralines. At the same time as it was pointed by the Appellate Court in Warsaw in its judgment of 3 October 2007, case file I ACa 767/07, there is no requirement of likelihood of confusion in relation to reputed trade mark, only the possibility to associate a sign with a reputed trade mark that was registered earlier, which results that the first sign is able to attract customers through positive images carried by a reputable character. Associations between such trade marks occur when the designation used by the infringer automatically brings in minds of potential customers a reputable character originally used by the owner, even if the recipient is aware of the fact that both entities are completely independent. If these signs are also used to designate similar goods, there is no need to show any additional evidence. Apart whether consumers will confuse this trade mark as to the origin of the goods designated, it will draw attention to goods bearing a renowned trademarks. Such a situation would give unfair advantage resulting only from similarity to the earlier reputed mark, based mainly on the effect of interest that would arouse in the goods covered by the contested mark, without incurring any expenses for promotion of those goods.

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 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 VI SA/Wa 1860/10

April 21st, 2011, Tomasz Rychlicki

On 20 December 2006, the Polish Patent Office granted the right of protection for the word trade mark O’LEARY R-180416 applied for by Piotr Kasprzycki PPH Eveline Cosmetics from Lesznowola for goods in Class 03 such as skin, hair and body care products for children, women and men, mascaras, creams, lotions, shampoos, soaps, gels baths, creams and gels, cosmetics, perfumery, and cleansing tissues and goods in Class 05 such as medicinal cosmetics.

R-65340

French company L’OREAL Societe Anonyme filed a request for invalidation. L’Oreal owns the word trade mark L’OREAL R-42203 registered with the earlier priority of 5 May 1960 for goods in Class 03 such as perfumery and cosmetics, toilet soaps, lipsticks, products for oral care, hair coloring agents, shampoos. The Company also owns the word-figurative trade mark L’OREAL STUDIO LINE R-65340 registered with the priority of 24 November 1988 for goods in Class 03. The French company argued that its trade marks are well-known and reputed. It presented a survey of consumers in the years 2001-2003, which proved the knowledge of the brand and consumer trust in the products. L’OREAL was the brand that has won numerous awards. The company argued that some of the goods are identical other are similar and raised an argument that the trade mark application was made in bad faith. The company relied on the judgment of the French court, which forbade the company that was created by Piotr Kasprzycki in France, the violations of trade marks and company name of L’Oreal, by the use of the name O’LEARY. L’OREAL also claimed the company created by Mr Kasprzycki was fictitious becuase its capital was 1 euro.

R-151141

O’LEARY argued that its trade Mark Has Irish origins and the average consumer is reasonably well informed and reasonably observant and circumspect. O’LEARY admitted that L’Oreal is a strong and very distinguishable brand and the consumer who buys these cosmetics will not pay attention to the other cheaper products. O’LEARY noted that since the French court judgment has been appealed, so the case has not been finally decided. In its opinion, the proceedings in France is not relevant in the proceedings before the Polish Patent Office.

The Adjudicative Board of the PPO in its decision of 16 March 2010 case no. Sp. 251/08 invalidated the right of protection for the trade mark O’LEARY. The PPO ruled that O’LEARY is confusingly similar to L’OREAL. Piotr Kasprzycki PPH Eveline Cosmetics filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 12 April 2011 case file VI SA/Wa 1860/10 agreed with the PPO and dismissed the case. The judgment is not final yet. The cassation complaint can be brought before the Supreme Administrative Court.

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 VI SA/Wa 2168/10

March 16th, 2011, Tomasz Rychlicki

Red Bull GmbH filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection to the “red dragon” trade mark R-179732 registered for DODONI Roman Górzyński, Marek Górzyński, Marcin Górzyński sp.j for goods in Class 32 such as mineral waters and non-alcoholic beverages. Red Bull claimed that “red dragon” is similar to its RED BULL R-207549, RED BULL ENERGY DRINK IR-0715531 and the CTM RED. Red Bull based its opposition on the reputation of these trade marks. The PPO dismissed the opposition and ruled that the opposed trade marks, despite the identical word element “red”, are different at all levels of perception, i.e., aural, verbal and conceptual, so that they produce a completely different impression on the average customer. These signs also have other verbal elements and the word “red” is present in other trade marks registered for goods in Class 32. In view of significant differences between opposed trade marks that excluded the risk of confusion as to the origin of the goods, the PPO decided that the reputation of Red Bull’s trade marks enjoyed on the Polish market is not relevant for the assessment of the risk of consumers confusion. Red Bull filed a complaint to the administrative court.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 December 2010 case file VI SA/Wa 2168/10 dismissed the complaint. The court agreed with the PPO that the consumer who does not speak English will perceive RED BULL and RED BULL ENERGY DRINK as fanciful trade marks, and “red dragon” composed in part with the fanciful word “red” and in part of the Polish word of some specific meaning (Dragoon – mounted infantry or as a tall, stout, vigorous, sprawling woman) will be perceived differently. The court held that since the opposed trade marks are not similar, therefore the registration of “red dragon” R-179732 will not bring unfair advantage to DODONI or be detrimental to the distinctive character or the repute of Red Bull’s trademarks.

Trade mark law, case VI SA/Wa 1936/10

February 4th, 2011, Tomasz Rychlicki

The Polish Patent Office dismissed the opposition against the registration of the trademark TARGA R-189862 owned by the Polish company VALVEX S.A.. The request was filed by Aloys F. Dornbracht GmbH & Co. KG. The German company based the opposition proceedings on the CTM TARA no. 827659.

The Voivodeship Administrative Court in its judgment of 11 January 2011 case file VI SA/Wa 1936/10 ruled that the risk of misleading the public as to the origin of goods or/and the manufacturer must be examined globally, taking into account all elements relevant. These elements include in particular: the degree of recognition of the earlier trade mark on the market, an association that may occur between that trade mark and the opposed trademark of another entrepreneur, the degree of similarity between the signs and goods and services. The Court agreed with the PPO that the goods covered by both trade marks were similar and of the same kind. These goods were directed mainly to professionals in the field of sanitary installations, construction or architectural design. The VAC found that these consumers were specialists with an above-average degree of product awareness, who purchased the products at issue in specialized points of retail or wholesale. With regard to the remaining consumers (i.e., non-professionals), the Court pointed out that the goods at issue were not likely to be bought impulsively. The Court found that TARGA and TARA were both simple, and easy to read, pronounce and remember. These signs are composed of four or five letters, and the first three letters ‘TAR’ and the last letter ‘A’ are identical. The trademark TARGA contains an additional letter ‘G’. Both marks are short, so the letter ‘G’ will be easily noticed and heard by consumers. The court found that the additional letter ‘G’ would have an impact on the perception of the marks. Where the trademarks concerned are short, one different letter is in general sufficient to exclude similarity.

Trade mark law, case VI SA/Wa 1124/10

January 11th, 2011, Tomasz Rychlicki

The Polish company GRAAL S.A. from Wejherowo applied for the word-figurative trade mark ERAFISH Z-340740 for goods in Classes 29 and 31. The Polish Patent Office refused to grant the right of protection for goods in Class 29. The PPO found that the applied sign is similar to the CTM EvraFish no. 4948618 owned by Stek-Rol. GRAAL filed a complaint against this decision.

Z-340740

The Voivodeship Administrative Court in Warsaw in its judgment of 24 September 2010 case file VI SA/Wa 1124/10 dismissed the case. The Court held the risk of confusion is based on wrong, inaccurate attribution of goods bearing a given trade mark to a right holder by an average consumer. The more distinctive trade mark with the earlier priority is, and the goods or services bearing the marks compared are more similar, the bigger risk of confusion exist. However, when the signs are identical, and the similarity between the goods exists, there is a significant possibility of confusion, or association of both signs, even for professionals. The relationship between a particular product or service and the sign marking it is formed in the minds of buyers.

The Court also noted that the likelihood of misleading consumers as to the origin of products bearing similar trade mark increases with the degree of similarity of the signs. Therefore, the buyer may assume that the owners of such similar signs are in organizational or legal relationship. The existence in the course of trade of a similar trade mark may suggest that the sign is merely a variation of an earlier registered trade mark and comes from the same entity. This was even more dangerous, since both signs are intended to mark the same goods. If the signs are so similar and there are the same goods/services selected, one cannot exclude the confusion among the consumers of those goods because consumers do not always analyze the structure of the mark before selecting the provider of goods or services. GRAAL S.A filed a cassation complaint. See “Trade mark law, case II GSK 413/11“.

Trade mark law, case VI SA/Wa 601/10

December 21st, 2010, Tomasz Rychlicki

The Polish company Producent Okien i Drzwi z PVC “OKLAND” Joanna Wilk i Wojciech Wilk Spółka Jawna from Kostomłoty Pierwsze filed a request for invalidation of the right of protection for a word-figurative trade mark Okland R-154904 owned by OKLAND Spółka z o.o. from Rokitki, in regard to the goods in Class 19, wooden windows. The company from Kostomłoty Pierwsze claimed it operates since 1 June 1997. Its business activities include the production of windows and doors of PVC in the four southern voivodeships. The company argued that the simultaneous use of the OKLAND sign in its company name and as a trade mark registered for a different entrepreneur may increase the risk of misleading the public, which includes in particular the risk of association between signs. The Polish Patent Office invalidated the right of protection. Okland from Rokitki filed a complaint against this decision.

R-154904

The Voivodeship Administrative Court in Warsaw in its judgment of 31 May 2010 case file VI SA/Wa 601/10 held that the registration of a trade mark that is identical or similar to a company name of another entrepreneur does not determine, however the infringement of the rights to the company name (the firm). The exclusive rights to the company name are not absolute. The limits of these rights are set by the coverage (territorial and objective) of the actual activity of a given company. The collision between identical or similar signs i.e. a company name and a trademark, may occur only within these limits. The judgment is not yet final.

Trade mark law, case VI SA/Wa 1425/10

December 15th, 2010, Tomasz Rychlicki

On 17 July 2008 Eltel Networks S.A. requested the Polish Patent Office to make a decision on the lapse of the right of protection for ELTEL R-75862 trade mark that was registered for ELTEL Przedsiębiorstwo Usługowo-Handlowe Brodnicki Bolesław from Poznań. The PPO concluded that the evidence submitted (invoices), despite using slightly different terms refer to services that correspond to services protected by the registered trademark. Eltel Networks filed a complaint against this decision.

R-75862

The Voivodeship Administrative Court in its judgment of 15 October 2010 case file VI SA/Wa 1425/10 held that documents, in particular orders, invoices, delivery or sale receipts, as well as labels, packagings and related evidence that is demonstrating the real occurrence of goods or services in trade, should be deemed as the essential evidence. But the crucial evidence are the invoices, because labels, tags, hangers, bags and seals for clothing, and pictures of stores do not show and prove the actual sale of goods marked with the sign, nor did they show the measurements and scale. Without invoices, the advertising materials, such as calendars, cards, pictures with the logo, can play only a supporting role. The Court agreed with the PPO and dismissed the complaint. The judgment is not final yet.

Trade mark law, case II GSK 258/07

December 13th, 2010, Tomasz Rychlicki

Aveda Corporation from Minneapolis, filed an opposition to avea R-151914 trade mark owned by INTERSILESIA MCBRIDE POLSKA Sp. z o.o. from Strzelce Opolskie registered for goods in Class 03. Aveda Corporation argued that avea trade mark is similar to its earlier AVEDA R-131741 trade mark. The Polish Patent Office has dismissed the opposition arguing that although the cosmetics in class 03 are goods for everyday use, the consumers pay special attention before their purchase, they check the ingredients of these products and are often testing them. Moreover avea trade mark is a word-figurative mark so it is protected as a whole.

Aveda Corporation filed complaint against this decision. The Voivodeship Administrative Court, in its judgment of 23 February 2007, case file VI SA/Wa 2048/06 dismissed the case. The Court held, that there is no risk of misleading the potential consumers although the trade marks AVEA and AVEDA are intended for marking the same goods, namely cosmetic products in class 03. Moreover the Court has agreed with the PPO, that the overall impression that trade mark exerts on the potential consumer is the most important factor. Although both trademarks differ from each other only in one letter, the figurative element in avea trade mark has crucial meaning.

Aveda Corporation filed a cassation complaint against this decision. The Supreme Administrative Court in its judgment of 20 December 2007 case file II GSK 258/07 held, that the Voivodeship Court could have agreed with the Polish Patent Office that the fact that both trade marks consist of the same element “ave” does not have to mislead the potential consumer when the letter “d” in the middle of the trade mark AVEDA this influences different perception of the trade mark. Although it was argued that the overall impression of the word-figurative trade marks in which the dominant element is a word, depends generally on the number of letters and the structure of the word.

The Supreme Administrative Court held, that the average consumer perceives the trade mark as a whole and does not analyze its particular elements. Therefore small differences between the trade marks are not sufficient to exclude the risk of visual similarity, especially when the trademarks have the common structure. In this particular case, it was considered that without analyzing the details of AVEDA and avea trade marks, the average consumer would notice the differences between both trade marks.

In answer to request of the plaintiff to refer to the Court of Justice for a preliminary ruling, stating that currently in force, test of assessment of risk to mislead a consumer and associating of trade marks on the basis on the art. 4 paragraph 1 point b), art. 5 paragraph 1 point 5 of Directive still raise concerns and in consequence there are discrepancies in the judgments of courts and Polish Patent Office, based on the judgments of OHIM, the Supreme Court held, that question formulated in this way did not meet criteria of Article 187 § 1 of Act on Proceedings Before Administrative Courts, according to which if, during cognisantion of the cassation appeal, there would appear a legal issue, that will raise doubts, the Supreme Administrative Court may postpone the proceedings and introduce this issue to the Composition of seven judges of this Court for deciding.

Regarding the following question of plaintiff to the Court of Justice of European Union i.e. whether increased level of attention of the average consumer can be admitted regarding the goods of common use, the Supreme Administrative Court ruled that the answer to this question was not of vital importance to this matter, because even lack of higher level of attention of the average purchaser of cosmetics did not affect the assessment that in the subject case, during the assessment of the opposite trade marks there was no risk of misleading the potential consumers.

Trade mark law, case II GSK 849/09

December 8th, 2010, Tomasz Rychlicki

In 2005, the Polish Patent Office registered the word-figurative trade mark MASTER COOK JAPART R-164044 for Przedsiębiorstwo Produkcyjno-Handlowo-Usługowe “JAPART” Zakład Pracy Chronionej from Panki. Podravka Prehrambena Industrija form Koprivnica Croatia, the owner of the word-figurative trade mark “PODRAVKA VEGETA” R-138057, gave reasoned notice of opposition to the final decision of the Patent Office on the grant of a right of protection.

R-138057

The PPO in its decision of 13 June 2008 case no. Sp. 523/06 ruled that “PODRAVKA VEGETA” is the reputed trade mark, although Podravka Prehrambena also supplied very worthless evidence materials. However, the PPO agreed with the owner that its trade mark was introduced on the Polish market in 1994, which was properly supported by documents issued on 11 October 1994 by the company’s marketing department. From this date the reputation of the trade mark could have been created and the existence of reputation is established before the date of application for the trade mark. In case of “MASTER COOK JAPART” it was before 3 April 2002. Therefore, the PPO invalidated the right of protection. Japart filed a complaint.

R-164044

The Voivodeship Administrative Court in its judgment of 22 May 2009 case file VI SA/Wa 2147/08 dismissed it. The Court came to the conclusion that Japart used a specific, multi-element composition of a reputed mark. The Court held that the likelihood of obtaining unfair advantage from the reputed trade mark is the obstacle that justifies the refusal to grant an exclusive right to sign that is identical or similar to the earlier a famous mark. It was therefore sufficient to assume that the applicant could use investments and financial efforts, which have previously been made by the owner of earlier trade mark to build an attractive image of the mark and attract customers. Japart filed a cassation complaint.

The Supreme Administrative Court in its judgment of 12 October 2010 case file II GSK 849/09 agreed with the VAC and dismissed the case. See also “Unfair competition, case I ACa 1270/10“.

Trade mark law, case VI SA/Wa 299/10

November 15th, 2010, Tomasz Rychlicki

On 14 March 2007, the Polish Patent Office registered the word-figurative trade mark Oxford Wielka Historia Świata R-187352 for goods in Class 16 such as books and periodicals. The Polish company “Oxford Educational” sp. z o.o. from Słupsk was the applicant and the holder of the right of protection. The Chancellor Masters and Scholars of the University of Oxford (Oxford University Press) filed a request for invalidation. The OUP argued that it is obvious to everyone that Oxford is a place uniquely associated by the public around the world with the home of a famous university. Therefore, marking the goods with a signs associated with Oxford – the seat of the famous University of Oxford – may mislead the public as to the true geographical origin of products. The OUP also pointed out that, with priority from 24 April 1995, is entitled to the rights of protection to three trade marks sharing the same verbal element, OXFORD, R-103399, OXFORD UNIVERSITY PRESS R-102351 and OXFORD ENGLISH R-102350.

R-187352

The Polish company argued that the trade mark at issue does not refer to a geographical name of Oxford town, but to holder’s company name, and therefore it is not misleading. Oxford Educational also argued that the disputed sign was created in collaboration with an English company. The Polish Patent Office invalidated the right of protection. The PPO ruled that the conflicting trade marks are registered for identical goods, therefore, there is a risk of misleading the public as to their origin. Oxford Educational filed a complaint against this decision.

R-102350

The Voivodeship Administrative Court in Warsaw in its judgment of 13 May 2010 case file VI SA/Wa 299/10 dismissed the complaint. The Court held that in case of a collision between a company name (the firm) and a trade mark that was registered with the “worse priority,” the priority shall be given to the right that was previously-formed. The mere registration of a trademark that is identical or similar to another company’s name (firm) does not provide even a breach of the rights to the company. However, the right to the company name would be infringed if the registration of a conflicting trade mark interferes with the exercise of this right. This distortion is misleading as to the identity of actors (acting under the company name and usign the sign) and therefore may jeopardize the company name. In case of a known, reputable, i.e. “strong” trade mark it means that the consumer awareness is associated with the recognized high-quality of products, derived from the manufacturer with high reputation. Thus, the registration of the questioned trade, and more – its application was made with a clear intention to benefit from the reputation of the OXFORD trade mark.

Trade mark law, case VI SA/Wa 807/10

November 8th, 2010, Tomasz Rychlicki

On 27 January 2007, the Polish Patent Office granted the right of protection for GUCIO trade mark R-187648 for goods in Class 25 such as children’s shoes.

Guccio Gucci S.p.A. the owner of two word-figurative trade marks GUCCI R-181633 and GUCCI R-184796 gave a notice of opposition to a final decision of the PPO on the grant of a right of protection to GUCIO trade mark. While proving the reputation of GUCCI trade marks, the Italian company stressed the fact that it owns many stores, where high-quality clothing and footwear is sold and it also includes shoes for children. The customers of these stores are known and influential people. The company argued that since the mid-twentieth century, the Gucci brand and products bearing this trade mark are associated with the highest quality and luxury – Gucci has become sort of “certificate of quality.” The Company pointed out that Gucci fashion house brings together leading, world fashion designers thus have a substantial impact on global fashion trends. Consequently, the goods that are marked with this symbol appear in numerous television programs, shows and magazines on fashion. GUCCI argued that similar trade marks in conjunction with the homogenity of goods for which these signs are clearly intended, may to lead to the risk of their association, and even confusion by customers, and this causes the possibility of customer confusion as to the origin of goods.

R-181633

Sławomir Piwowarczyk, the holder of GUCIO trade mark argued that the word GUCIO is a diminution of GUSTAW. The PPO dismissed the opposition. Guccio Gucci S.p.A. filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 30 August 2010 case file VI SA/Wa 807/10 dismissed the complaint and held that dissimilar signs cannot lead to customers’ associations, so there can be no issue of imitation, and conscious deriving of benefits from someone else’s reputation. If the similarity between the signs does not occur there is no need to examine whether there was the use of another person’s reputation. The examination whether there are similarities between the trade marks is the “precondition” of establishing the argument/view that the use of reputation has been made. The second condition is to establish/examine that the trade mark has a reputation. The judgment is not final yet.

Trade mark law, case VI SA/Wa 1099/10

October 20th, 2010, Tomasz Rychlicki

The Polish company Polski Koncern Naftowy ORLEN S.A. applied for the right of protection for word-figurative trade mark “BIG energy drink” Z-336460 for goods in Classes 06, 16, 32, 35, 43.

Z-336460

The Polish Patent Office issued a decision refusing to grant the protection in part of goods in Class 32 such as energy drinks, juices and juice drinks, carbonated and non-carbonated mineral water, drinks other than alcohol, syrups, concentrates for the preparation of drinks, sports drinks, nectars, beer and in part of services in Class 35 such as retail and wholesale sale services of energy drinks, juices and juice drinks, mineral water, alcoholic drinks, syrups, concentrates in the preparation of drinks, sports drinks. The PPO found also a conflicting CTM “BIG ENERGY” No. 002135812 registered for goods such as non-alcoholic beverages, fruit drinks, fruit juices and fruit nectars, bases and essences (included in class 32) for making the aforesaid beverages. ORLEN filed a complaint against this decision claiming that the refusal was based solely on the likelihood and hypothetical clues, not actual evidence of a convergence of signs and the resulting collision. There was also no presence of the product bearing the opposed trade mark on the Polish territory.

CTM-002135812

The Voivodeship Administrative Court in Warsaw in its judgment of 30 August 2010 case file VI SA/Wa 1099/10 annulled the contested decision. The VAC ruled the relationship between the petrol stations retail networks and certain “additional products”, bearing their trademark, is becoming ever closer. In such situation it significantly reduces the risk of confusion – the risk of misleading the public, which includes in particular the risk of associating the trademark with an erlier trade mark. The consumer begins to associate certain product (e.g., energy drink), not only with a specific sign, but also with a specific network of petrol stations, in which the drink will be available. The judgment is not final.

Unfair competition, case V CSK 192/09

September 28th, 2010, Tomasz Rychlicki

AFLOFARM Fabryka Leków sp. z o.o. from Ksawerów sued two Polish companies for trade mark infringement and unfair competition delict/tort with regard to selling similar pharmaceutical products. This case went through all instances.

Z-307527

The Supreme Court in its judgement of 22 January 2010 case file V CSK 192/09 published in the electronic database LEX, under the no 564857, dismissed the complaint filed by Hasco Lek S.A. and Hasco Lek Dystrybucja. The Court held that the specificity of the market’s segment in which the magnesium preparations are sold, and which boils down to the fact that the same or very similar products gains the advantage of customers, through its specific name and advertising of such product and its packaging, requires greater care when introducing a new product of a very similar name and packaging, because it cannot mislead consumers, and it cannot take away consumers from another producer.

Trade mark law, case VI SA/Wa 711/10

September 20th, 2010, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark PRODUCT OF ITALY FILIPETTI Casa Fondata nel 1922 VERMOUTH EXTRA DRY Ricetta Originale Filipetti Prodotto seguendo la tradizionale ricetta della Casa Filipetti Z-298152 that was applied for by Domain Menada Sp. z o.o. for goods in Class 33. The PPO decided that this trade mark is similar to the word trade marks FILIPETTI R-101614 and R-140718 owned by Belvedere S.A. Domain Menada argued that it is a part of the Belvedere Group, and provided a letter of consent. The Company filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 21 June 2010 case file VI SA/Wa 711/10 dismissed it. The Court held that in any case, the mere existence of links (relationships) between entrepreneurs belonging to the same capital group cannot be regarded as a guarantee of quality of product bearing the disputed trade mark.

Z-298152

It should be noted that the capital group is a specific form of business, where corporate governance is exercised at several levels – both across the group and in individual companies. The mere membership in a capital group cannot be used as an argument that the signs from affiliated companies will not mislead consumers. Domain Menada filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 December 2011 case file II GSK 1245/10 dismissed it. The SAC held that the letter of consent was not binding and the PPO examined its effects in different aspects, based on gathered evidence, and it found that the letter of consent is not an exemption to grounds for refusing trade mark protection

Trade mark law, case VI SA/Wa 21/10

September 7th, 2010, Tomasz Rychlicki

The Polish company Atlantic sp. z o.o. applied for the word-figurative trade mark ATL ATLANTIC Z-313731 in classes 03, 18 and 25. The Polish Patent Office refused to grant the right of protection in part of the goods covering deodorants for personal use, soaps, perfumery, cosmetics, cosmetic kits, portable suitcases for cosmetics, travel bags for clothing, shopping bags, beach bags, handbags and women handbags.

Z-313731

The PPO held that there are similar and conflicting trade marks such as Atlantic R-141375 for goods in class 18, Atlantic IR-631190 and ATLANTIC IR-787876 for goods in class 03.

R-141375

The Voivodeship Administrative Court in Warsaw in its judgment of 7 April 2010 case file VI SA/Wa 21/10 dissmissed Atlantic’s complaint and upheld the contested decision. The Court ruled that in all cases where the problem of the similarity of the opposed trade marks arises, it is the result of two closely related issues, i.e. the similarity of signs and the similarity (homogeneity) of goods/services for which the signs are applied for, registered or used. Both these factors determine the scope of trademark protection (citing M. Kępiński [in:] Niebezpieczeństwo wprowadzania w błąd odbiorców co do źródła pochodzenia towarów w prawie znaków towarowych, ZNUJ PWOWI zeszyt no 28 of 1982, p. 10). The VAC held that the convergent elements of disputed signs have crucial meaning for the buyers and such conclusion is justified from a psychological point of view, since the purchaser keeps in mind only a general representation of the sign for which is he or she looking for. Therefore the buyer chooses a sign based only on dominant elements while ignoring differences.

Trade mark law, case VI SA/Wa 180/10

September 6th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 16 June 2010 case VI SA/Wa 180/10 held that in assessing the confusing similarity the PPO should not be limited to include only one component of a complex sign while comparing it with another trade mark. On the contrary, such a comparison is made by examining the signs as whole.

Trade mark law, case V CSK 293/09

September 2nd, 2010, Tomasz Rychlicki

Polish company Technopol sp. z o.o. succeeded to register in the Polish Patent Office over a hundred word and word-figurative trade marks in the form of Arabic numeral “100” and its multiples (200, 300, etc.) together with the word “Panoramicznych” or “Panoram”. Technopol was sued by another Polish entrepreneur, Roman Oraczewski who publishes crossword magazines under such titles as “222 Panoramiczne”, “333 Panoramiczne”, “500 Krzyżówek”, “300 Krzyżówek z Uśmiechem”, “300 Krzyżówek Panorama Rozrywki”. Mr Oraczewski claimed protection to its press titles and Technopol filed counter claims based on Article 10 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), published in Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.

Article 10.1. Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and another significant features of products or services as well as concealing the risks connected with their use, shall be the act of unfair competition.
2. Releasing for free circulation products in the packing which may cause effects referred to in section 1 above shall be the act of unfair competition, unless the use of such packing is justified by technical reasons.

Technopol requested the court to issue preliminary injuction ordering Mr Oraczewski to cease the sale and introduction to the market of all his magazines bearing titles that are identical or similar to Technopol’s trade marks. The Court granted the injunctive relief. Mr. Oraczewski did not agree with such order and after couple of years this case ended in a final dismissal of the application for preliminary injunction. Mr. Oraczewski sued Technopol for the compensation for the loss incurred due to the enforcement of the injunction. He claimed over 67.000.000 PLN loss. According to Article 746 §1 of the Civil Proceedings Code – CPC – (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, published in Journal of Laws (Dziennik Ustaw) No. 43, item 296, with subsequent amendments, when a preliminary injunction has been granted and the plaintiff fails to file the principal claim, withdraws it, the claim fails for procedural reasons, or is dismissed as unfounded, the defendant may demand compensation for the loss incurred due to the enforcement of the injunction. The claim expires if it is not pursued within one year from the moment the loss occured. This provision makes a plaintiff who obtained a preliminary injunction but ultimately failed with its principal claim liable towards the defendant for the loss caused by the injunction.

100_panoramicznych-cover

The Supreme Court in its judgment of 25 February 2010 case file V CSK 293/09 held that the liability provided under Article 746 § 1 of the CPC is independent of plaintiff’s fault. However, the Court dismissed Mr Oraczewski complaint because he did not follow the preliminary injunction order.

Trade mark law, case VI SA/Wa 710/10

August 30th, 2010, Tomasz Rychlicki

On 25 July 2005, DOMAIN MENADA Sp. z o.o. from Warsaw applied for the right of protection for FILIPETTI MONTENERO SPUMANTE DEMI SEC dalla tradizione italiana trade mark in class 33. The Polish Patent Office informed DOMAIN MENADA that there exist earlier trade marks owned by Belvedere S.A. and refused to grant the right of protection for the applied sign. DOMAIN MENADA filed a complaint in which the company argued that it is a member of Belvedere Group and provided a proper letter of consent.

Z-298140

The Voivodeship Administrative Court in Warsaw in its judgment of 21 June 2010 case file VI SA/Wa 710/10 held that in any case, the mere existence of links (relationships) between entities belonging to the same capital group cannot be regarded as a guarantee of quality of product bearing the disputed trademark. It should be noted that the capital group is a specific form of business, where corporate governance is exercised at several levels – both across the group and in individual companies. The mere membership in a capital group cannot be used as an argument that the signs from affiliated companies will not mislead consumers.

Trade mark law, case VI SA/Wa 839/09

August 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative in its judgment of 5 August 2010 case file VI SA/Wa 839/09 decided on the complaint of the holder of the Polish trademark registration DSC R-82966 against the decision Sp. 2/98 of the Polish Patent Office of 28 January 2009 on invalidation of this trademark.

R-82966

The VAC has not examined substantive issues of the matter because as it has stated the decision of the Polish Patent Office is too general and it does not specify documents on which the Polish Patent Office has based its findings. In the Court’s opinion the Polish Patent Office quoting his findings has only used the phrase “it results from the submitted documents that…”, instead of giving precise description of each relevant document, which prevents the Voivodeship Administrative Court from presenting its opinion on the correctness of the questioned decision. In view of above, the complaint has been accepted and the matter has been transferred to the Polish Patent Office for reexamination.