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Archive for: likelihood of confusion

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.

Trade mark law, case VI SA/Wa 2038/09

July 14th, 2010, Tomasz Rychlicki

Polish company Przedsiębiorstwo POLMOS Białystok Spółka Akcyjna, the owner of word-figurative and 3D trade mark “POLMOS ŻUBRÓWKA BISON BRAND VODKA” R-62081 and 3D trade mark R-85811, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection to word-figurative and 3D trade mark “VODKA Herbe de Pologne” R-155144, registered for BELVEDERE S.A.

R-62081

POLMOS argued, inter alia, that there is a significant visual similarity between trade marks at issue. Its bottle has a blade of grass, which is very dominant and attracts the attention of the average consumer. Such assessment cannot be undermined by the fact that there are few blades of grass in the bottle representing the questioned trade mark. POLMOS argued that the registration of “VODKA Herbe de Pologne” threatens the reputation of its trade marks, and emphasized the role of grass in the bottle as a motif indicating the origin of the product. POLMOS added that the purpose of BELVEDERE’s actions was the parasitic use of the reputation of earlier trade marks owned by POLMOS.

In the opinion of the Polish Patent Office (PPO) these trade marks were visually dissimilar because of different bottle shape, color, the presence of a label in the contested mark and the lack of labels in the opposed one, number and appearance of components in liquid. These signs were incomparable in the phonetic/aural aspect, so they were also dissimilar, as the opposed trade mark lacks lettering. In the conceptual aspect the questioned trade mark contains a bunch of herbs inside the bottle and the word “herbe” which indicates that the vodka is herbal, and the opposed sign, contains a longitudinal component, but this element in general is not like weed-grass. Consequently, due to lack of similarity the PPO held that the opposition is unfounded. POLMOS filed a complaint.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 April 2010 case file VI SA/Wa 2038/09 held that in the case of trade mark reputation, a sign has to be examined as a whole, as the right of protection was granted for such a designation. It can not be allowed to examine every element of the sign separately, in isolation from the whole trade mark.

R-155144

The Court also ruled that the similarity of signs is a prerequisite for examining whether in a particular situation there was infringement of the reputation of an earlier mark. See “Trade mark law, case II GSK 207/07“. The VAC held that the absence of the similarity of signs, which also includes the possibility of their association, is the argument that the presence on the market of goods bearing the sign at issue will not affect in any way the alleged reputation and distinctive character of POLMOS’ trade marks.

Trade mark law, case V CSK 71/09

March 11th, 2010, Tomasz Rychlicki

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

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

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

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

Technopol’s claims were also based on articles 120(2) and 296(1) and (2) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments.

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

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

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

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

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

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

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

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

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

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

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

Pharmaceutical trade marks, case VI SA/Wa 844/09

February 2nd, 2010, Tomasz Rychlicki

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

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

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

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

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

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

Trade mark law, case II GSK 1022/08

September 11th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 19 June 2008 case file VI SA/Wa 278/08 dismissed a complaint on the decision of the Polish Patent Office on the refusal to grant the right of protection for “clim PUR” Z-270334 trade mark applied for the goods in class 3. VALEO SERVICE société par actions simplifiée filed a cassation complaint.

R-221567

The Supreme Administrative Court in its judgment of 3 June 2009 case file II GSK 1022/08 held that the Court is not alone entitled to precise (supplement or refine) of the allegations included in the cassation complaint, or making hypotheses in this regard, sanctioning so to say its deficiencies. The interpretation of the scope and direction of a complaint is also not permissible, because the cassation appeal should be drafted in a such way that there would be no questions of its interpretation.

Trade mark law, case II GSK 986/08

August 31st, 2009, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 3 June 2009 case file II GSK 986/08 held that the provisions of Article 132(2)(ii) of the IPL does not refer only to the so-called direct risk, that is a situation where the similarity of the opposing trade marks is so close that the consumer may be easily confused but also a situation of the so-called indirect risk, which is based on the fact that the potential customer may mistakenly associate both trade marks.

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

The risk of confusion as referred to in that provision of the IPL, includes therefore the likelihood of customer confusion as to the origin of the goods in the strict sense, as well as the risk of confusion as to the relationship of sources of origin of goods bearing the opposed trade marks. This is simply a situation where the average customer, following the association between two marks, may assume that a company using a similar trade mark as the owner of a prioro right , is in economiclegal or organizational relationships, that are essential for the manufacture, marking, and the introduction of a product to the market. This case concerned a decision on definitive refusal to recognize the protection of Tim IR-0809911 trade mark.

Trade mark law, case VI SA/Wa 1917/08

August 18th, 2009, Tomasz Rychlicki

On 23 September 2005, the Polish Patent Office granted the right of protection for the word trade mark COROTAPE R-168086 for goods such as tape, foil and anti-corrosion membranes in class 2 and goods in class 16. The right was granted to the Polish company CB Spółka z o.o. from Opole. Coroplast Fritz Müller GmbH & Co.K.G. from Wuppertal, Germany, filed a notice of opposition based on 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 later amendments.

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.

Coroplast Fritz Müller argued that COROTAPE was similar to its COROPLAST mark R-91907, registered for goods in classes 2, 9, 16 and 17 and that they were confusingly similar because they shared the same prefix “coro”. There was therefore a risk that the average recipient of the goods bearing compared trade marks, may think that the conflicting signs, as having a common, “coro” prefix, derived from the same manufacturer or from companies affiliated (legally or organizationally). In addition, Coroplast Fritz Müller argued that the trade mark application was made in bad faith, because its products were present in Poland for many years and had established a reputation of which CB Spółka z o.o. must have been aware.

CB Spółka z o.o. argued that it continued the development of the COROTOP brand and that the disputed trade mark was not similar to the trade mark and company name of Coroplast Fritz Müller in their phonetic aspect because, in spite of the identical prefix, they had a completely different ending, indicating the nature of the product. In addition, the Polish Patent Office had registered a number trade mark starting with the prefix “coro” or “koro” for goods in classes 2 and 17. What’s more, there was no risk of misleading, because the goods were placed on the market in conjunction with the information for the customer and for a limited group of specialized recipients.

Coroplast Fritz Müller further stated that the Polish company acted in bad faith because it had used COROPLAST on its website which was removed as a result of the cease and desist letter, and since the seat of CB Spółka z o.o. was located where two Polish subsidiaries of German companies also operated.

While assessing the similarity of the two characters, the PPO found that they consisted of three syllables, with the same fanciful prefix, which is a distinctive element and acts as a tip about the commodity. As a result, the PPO found that the disputed trade mark was similar to the earlier registered sign in its visual and aural aspects but was not similar in the conceptual context. The PPO indicated that the visual similarity was based on the same syllables, the same letters in the same or similar quantities. The PPO also stressed that the disputed mark was of three syllables, using the same “coro” prefix, which was fanciful, and was definitely a distinctive element. The “tape” ending was far less important, fulfilling an information role about the function of the goods. The use of the “coro ” prefix maked the signs phonetically similar.

Referring to the case law, the PPO emphasized that assessment of a trade mark is made as a whole and the risk of misleading the consumer must be assessed globally, taking into the account all relevant factors. In the PPO’s assessment, despite the assumption that the average consumer is a person duly informed, careful and cautious, there is a risk of confusion. The buyers, while recognizing the difference between COROPLAST and COROTAPE, would wrongly assume – because of the prefix which is identical – that they purchased the goods originating from one manufacturer or from the entities that are economically and organisationally linked.

The PPO did not agree with an argument that it had registered a number of trade marks for goods in in class 2 and 17 with “coro” and “Koro” prefixes. It pointed out that none of these trade marks was intended to designate the goods that were concerned in this dispute, adhesive tapes for industrial use.

In addition the PPO found that the applicant made a bad faith application for COROTAPE. It was evidenced by the use of “coroplast” in the offer and on its website. The PPO found that it was not accidental that the use of the prefix “coro” in the COROTAPE and COROTOP trade marks, which are leading brands of CB Spółka z o.o. The PPO also stressed the significant fact that there were two factories belonging to Coroplast Fritz Müller GmbH, located in small towns around Opole (where CB Spółka z o.o. has its business seat), which have operated since 1994 and 1998. According to the PPO, it was not possible that CB Spółka z o.o. was not aware of the existence of these factories and unwittingly created a trade mark with a “coro” prefix.

The Polish Patent Office invalidated the right of protection for COROTAPE R-168086 trade mark. CB Spółka z o.o. filed a complaint to the Voivodeship Administrative Court in Warsaw. Although the VAC in a judgment of 19 February 2009, case file VI SA/Wa 1917/08 ruled that an application for the rights for protection of a trade mark in bad faith occurs when, despite the knowledge or ignorance, which is a corollary of a lack of diligence, regarding the existence of someone else’s rights or interest worth of protection, which may be threatened by such application, and with the intent to harm someone’s else interests. The intention, assessed from the point of view of fairness and honesty, is of great importance for the assessment of applicant’s bad faith.

Such is the case when the trade mark application is done in order to eliminate a competitor with the intent to capture his clientele. Acting in bad faith is one who knows or with due diligence should know about the use of a trade mark by another highly successful entrepreneur and – anticipating his application for the right of protection for a trade mark – he applies for the registration of such trade mark. Acting in bad faith is a person who applies for a trade mark rights for a sign belonging to a foreign entrepreneur to prevent him in obtaining protection in the Republic of Poland or in order to obtain profits from the sale of such acquired rights.

But the Court also held that the Polish Patent Office did not properly justify its decision on the bad faith application. The VAC found that the issueance of the contested decision was made in breach of the procedural law, and it annulled it, ruling that the decision was not a subject to execution. The judgment is final.

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

June 17th, 2009, Tomasz Rychlicki

On 17 February 2005 Société des Produits Nestlé S.A. from Vevey applied to the Polish Patent Office to register the word-figurative trade mark Frappé Z-291280 for goods in class 30. On August 2005 Nestlé filed a request for invalidation of the right of protection of the FRAPPE R-13842 trade mark, registered for goods in class 30 and 32 owned by Polish company “MASPEX” Spólka z o.o. form Wadowice. Nestlé based its request on provisions of article 7(2) and article 8(3) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with 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 IV CSK 335/08

June 14th, 2009, Tomasz Rychlicki

The Supreme Court in its judgment of 4 March 2009, case file IV CSK 335/08, published in Jurisdiction of the Supreme Court Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2009, No. C, item 85, p. 161, ruled that the degree of similarity, which leads to linking (associating) both signs by relevant recipients is sufficient for the assessment of the similarity of the signs as a condition for infringement of a reputed trade mark. However, first, it is necessary to determine whether a trade mark has a status of reputable one, if the claim is based on article 296(2)(iii) 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.

2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(iii) a trademark identical or similar to a renown trademark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trademark.

Trade mark law, case I CSK 96/08

March 20th, 2009, Tomasz Rychlicki

In the shade of the recent opinion of Advocate General Eleanor Sharpston QC given to the Court of Justice of the European Communities in case C‑529/07, Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, here is the story of couple of judgments decided in the recent suits brought against the Polish company Terravita by the Swiss company Chocoladenfabriken Lindt & Sprüngli, AG from Kilchberg in Switzerland.

Lindt's hare

Lindt & Sprüngli requested the Polish court to prohibit Terravita from offering, marketing or storage chocolate products with a characteristic shape of a seated hare, wrapped in metail foil with clearly marked drawings of nose, bandoline, eyes, ears and tail with bow placed on the neck. Lindt also asked the court to stop the defendant using or affixing “Terravita hare” or its image in advertising and commercial documents, and an order that the defendant withdraw the “Terravita hare” from the market, requiring the defendant to destroy all packagings, packaging designs and dies, molds and other devices intended to produce and direct wrapping the “Terravita hare”.

The District Court in Warsaw, the Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydzial XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 22 September 2005 dismissed the action. The court held that the conditions set out in article 9(1)(b) of the CTMR were not met. In the court’s opinion “Goldhase”, “Lindt” and “Terravita” signs that appear on the respective products differentiated them significantly and hence there is no risk of consumer’s confusion. The average consumer of chocolate hares does not perceive the origin of the goods only on the basis of the shape of a hare, but also on the basis of other important and distinguishing elements, including the mark placed on the product, the color of the packaging, its price, the trade mark identifying the manufacturer. The average consumer sees the difference in colour of the packaging of chocolate hares, and these were different in this case. Lindt’s packaging of the hare has the color of gold, red and brown, and Terravita’s are in silver. In addition, the District Court indicated that according to article 159a(5) of the CTMR, the defendant has only the right to prohibit the use of a trade mark on the territory of the Republic of Poland.

Terravita's hare

Lindt brought an appeal. The Appellate Court in Warsaw in its judgment of 6 July 2006 case file I ACa 616/07 dismissed the case. The Court held that the shape and the colour did not inform about the origin of the goods. The form of a sitting hare, Easter eggs or bells do not have a distinctive characteristic. The court similarly assessed the coloring of the aluminum foil placed on chocolate hares. The colour of silver and gold are typical for chocolate products. In this case, the only distinctive elements of both products were sings “Goldhase Lindt” and “Terravita” and they were dissimilar. Accordingly there was no risk of consumers confusion as regards the orgin of goods.

Lind brought a cassation complaint to the Supreme Court of the Republic of Poland. The Court, in its judgment of 13 April 2007, case file I CSK 16/07, ordered the Appellate Court to reconsider the case. The Supreme Court has interpreted the EU law, pointing to the need for a comprehensive assessment of similarity of the disputed signs. Only such an assessment would determine whether there is a risk of confusion.

The Court of Appeal, after rehearing the case, changed its judgment in favour of Lindt. The court found that the Golden hare was introduced by Lindt on the Polish market in 1997 (16 pieces), and 240 pieces in 1998. On March 1999, Terravita purchased in Germany the same form as the form used by Lindt and began producing and marketing of chocolate hares. Therefore the disputed hares share the same shape and size. Both are packaged in foil – gold, or silver, both have a ribbon tied to the neck in bow but Terravita’s is printed on the foil and there is no bell. The Court of Appeal stated that the condition for the likelihood of confusion has been met. The court stressed that Lindt’s Gold hare is well known among consumers of chocolate products. Therefore, there was no doubt to believe that Lindt’s hare has a huge recognition among consumers of chocolate products, especially if its presence on the market was established for more than nine years. With regard to the Terravita silver hare the Court of Appeal held that, although the latter figure was produced using the same form as used by the Lindt, and thus both hares are having the same shape and size but additional drawings and elements preclude similarities.

This time, Terravita brought a cassation complaint. The Supreme Court in its judgment of 3 October 2008, case file I CSK 96/08 held that in the circumstances of this case, there is no doubt that disputed hares are not identical and only its shape is the same, since they are manufactured from the same form. However on the foil of both hares, in a prominent place, one may find adequately put signs “Lindt Goldhase” or “Terravita”, which in fact makes the likelihood of consumer confusion practically excluded. The Court cited its earlier case law. The Supreme Court in its judgment of 1 February 2001, case file I CKN 1128/98, published at OSNC 2001, No. 9, item. 136, held that if word-figurative trade marks are used on the market then the word elements of such signs should have been attributed the distinvtice characteristics. The SC in its judgment 8 April 2003, case file IV CKN 22/01, published at OSP 2004, No. 5, item 61, held that in case of word-figurative trade marks the word element has the distinctive characteristics because it determines the ease of assimilation and the perception by the public. The Supreme Court in its judgment of 14 November 2003, case file I CK 176/02 (unpublished) excluded the risk of confusion in a situation where bottles used by the plaintiff and the defendant had the same shape (as in the facts of this case these bottles came from the same form), but were labeled with various word and images elements. In conclusion, the Court held that in the case of two identical products, one of which concerns the Community trade mark, the likelihood of confusion within the meaning of article 9(1)(b) of CTMR does not exist, if the other characteristics of goods, in particular bearing the word or image, allow them to be clearly distinguished.

Trade mark law, case Sp. 564/07

March 4th, 2009, Tomasz Rychlicki

On 21 July 2006 the PPO issued a positive decision and registered the word trade mark PLUSPIRYNA R-175822 in class 5 for pharmaceuticals products. It was applied for on 4 November 2005, by the Polish company Zakłady Farmaceutyczne Polpharma S.A. from Starogard Gdański. The German company Bayer Aktiengesellschaft from Leverkusen filed a request to invalidate the right of protection. The request was based on article 131(2)(i) and article 132(2)(ii) and (iii) 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.

Article 131(2)(i)
2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,

Article 132(2)(ii) and (iii)
2. A right of protection for a trade mark shall not be granted, if the trade mark is:
(ii) a trade mark which, before the date according to which priority to obtain a right of protection is determined, has been well-known and used as a trade mark in respect of the goods of another party,
(iii) a trade mark earlier registered in the Republic of Poland, whose registration has terminated, provided that an interval between the date of lapse of the right of protection for the trade mark and the date on which a similar trade mark has been applied for by another party, is, subject to Article 133, no longer than two years.

Bayer presented its earlier rights of protection for the trade mark ASPIRIN R-41042, which was applied for in the Republic of Poland on 20 June 1958, in class 5 for pharmaceutical preparations. Bayer alleged that Polpharma’s mark was confusingly similar to ASPIRIN and that PLUSPIRYNA is build on the reputation of Bayer’s trade mark. The disputed trade mark includes “pirin” component which in its overall assessment makes it similar to the ASPIRIN trade mark and it also weakens its reputation. Bayer has also registered other trade marks such as ASPIRIN-C R-105171, ASPIRIN R-105170 – applied for on 18 January 1994, these signs were registered on 8 September 1998 and ASPIRIN R-94326 – registered on 26 February 1997, in class 5 for goods such as medicines, pharmaceutical preparations, chemical proudcts for health care.

Polpharma argued that it has been registered a lot of trade marks including the “piryn” element. Although ASPIRIN trade mark has been applied to register in Poland in 1958, but for many years products bearing this sign were not available on the market in general, only in Pewex and Baltona shops – these two types of shops operated in the communist Poland selling otherwise unobtainable Western goods in exchange for Western currencies. Polpharma provided a whole series of trade marks that include “piryna” element – a well-known word mark POLPIRYNA R-48888 protected since 1969, and available on the Polish market since 1955, word trade mark POLOPIRYNA C R-55084 protected since 1976, the word trade mark CALCIPIRYNA R-96016 protected since 1994 and the word trade mark Etopiryna R-59876 protected since 1983.

The Polish Patent Office did not agree with Bayer’s arguments and dismissed the invalidation request in its decision of 3 February 2009, case file Sp. 564/07.

Trade mark law, case

January 17th, 2009, Tomasz Rychlicki

The Polish company Arenda Biuro Obrotu Nieruchomosci from Warsaw filed before the Polish Patent Office a request for invalidation of the right of protection of the trade mark ARENDA WOJCIECHOWSCY R-178655, which was registered in classes 35, 36, 37 and 42. The company from Warsaw claimed that there was a risk of confusion between the trade mark ARENDA WOJCIECHOWSCY and the trade mark ARENDA R-94766, which was applied for with an earlier priority on 3 November 1994 and registered on 27 March 1997 for services in class 36 for real estate agency and brokerage.

R-178655

ARENDA S.C. from Czestochowa argued that claims based on article 132(2)(ii) of the IPL were unfounded because an assessment of the overall impression excludes the risk of confusion as regards the disputed trade marks

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

The company argued that both signs have different graphics, which clearly distinguishes them. Another argument was that the PPO had already registered six different trade marks with the ARENDA element.

R-94766

Despite the fact that, in the Polish language, “arenda” formely meant “lease” or “tenancy”, the PPO had invalidated the right of protection for a trade mark in part – in class 36 in its decision of 27 October 2008 act signature Sp. 487/07.

Trade mark law, case II GSK 400/08

December 29th, 2008, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 1470/07“. The Supreme Administrative Court in its judgment of 28 October 2008 case file II GSK 400/08 held that the infringement of the right to the company name (the firm) as a condition for the invalidation of the registration of a trade mark, should not be prejudged by the registration of the same or similar trademark, as the name of another company.

R-222381

An important factor determining the infringement of personal or property rights of third parties, is the risk of leading a consumer to confusion as to the identity of the entrepreneur, and it determines the territorial and substantive scope of the actual activities of the entity using a given name, which is the subject of the trade mark, which has been granted the right of protection. This case concerned the invalidation proceedings of MURBET R-155245 trade mark owned by Przedsiębiorstwo Wielobranżowe MURBET Andrzej Zaborski. The proceedings were initiated by the MURBET Gabrylewicz Spółka Jawna company from Ełk.

Trade mark law, case VI SA/Wa 1208/08

December 27th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 18 October 2008 case file VI SA/Wa 1208/08 held that it is unacceptable to grant a right of protection for a sign that identical or similar to other trade mark, if it results in a right, the scope of which at least partially overlap with the scope of protection right with an earlier priority.

Z-295169

The Court held also that the problem of homogenity of the goods is a preliminary issue, which is decided before the examination of similarity of the goods because the use even of identical marks for dissimilar goods does not lead to the risk of confusion as to the origin of goods. This case concerned word-figurative trade mark application UNI-GRUNT Z-295169 applied for by Atlas Sp. z o.o. and UNIGRUNT R-86202 trade mark owned by PPG DECO POLSKA Spółka z ograniczoną odpowiedzialnością.

Trade mark law, case VI SA/Wa 1524/08

December 26th, 2008, Tomasz Rychlicki

The Polish Patent office invalidated the right of protection for NIZOPOL R-152880 trade mark owned by Zakłady Farmaceutyczne “POLFA-ŁÓDŹ’ Spółka Akcyjna. The request was filed by Johnson and Johnson Company who owns NIZORAL R-57978 trade mark. The PPO held that both signs are similar and share at the beggining the same 4 letters NIZO.

The Voivodeship Administratve Court in Warsaw in its judgment of 26 November 2008 case file VI SA/Wa 1524/08 invalidated the questioned decision and ordered its re-examination. Although the Court shared the view of the PPO that during the examination of the questioned word marks in the aural apect, the more attention should to be paid to the first letters and syllables, and a very small role of the endings of words should be recognized, citing J. Piotrowska, Renomowane znaki towarowe i ich ochrona (in English: Reputed trade marks and their protection), Wydawnictwo C.H. Beck, Warszawa 2001, p. 131, however, according to the VAC, the PPO did not consider at all the issues related to the degree of public attention. According to the VAC, even the ordinary and final recipient (and not only the professional) when during the purchase of products such as pharmaceuticals or cosmetic can be extremely careful in selecting the correct product because the product purchased is not the regular goods, but one that will (or may) have some consequences for his health. The recipient will also be a more likely with a similar purchase to seek and take into consideration the advice of an expert. A prudent consumer should pay particular attention to the name (and thus the mark) when purchased.

The PPO did not also made in this case, any assessment of other important factors affecting the risk of confusion, namely, did not address the issues related to the alleged occurrence in the course of trade any other similar signs/designations containing the prefix “nizo”. The PPO have to respond to arguments and the circumstances showed by the Polish company, since it is argued the legal doctrine, that the use of the same or similar trade mark by third parties could lead to a weakening of the impact of such sign, and thus – to reduce the risk of confusion, citing R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 91.

In this situation – according to the Court – it must be assumed that the PPO during the re-examination of the case should first consider the question of the similarity of the goods. The VAC noted that according to settled case-law, the assessment of the similarity between the goods or services should take into account all relevant factors relating to those goods or services. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary, citing T‑420/03, El Corte Inglés, SA v. OHIM.

In the opinion of the Court when re-considering the issue again with regard to the risk of misleading consumers, the Patent Office will be obliged to consider how the risk of confusion is likely to affect the power of the effectiveness (common knowledge) of the opposed earlier mark, in the light of the model of the average consumer that was established in the Community case-law. In this situation the PPO should also consider the issue of the possible risk of confusion, taking into account the intened use of both signs.