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Archive for: 3D trade mark

Trade mark law, case I ACa 1402/12

June 28th, 2013, Tomasz Rychlicki

The Polish company SOBIK, a producer of butter, sued Okręgowa Spółdzielnia Mleczarska in Radomsk (OSM) for trade mark infringement of the word-figurative trade mark NATURALNY PRODUKT POLSKI, MASŁO EXSTRA OSEŁKA GÓRSKA z ekologicznie czystych terenów R-165550 and the word-figurative trade mark Naturalny polski produkt z ekologicznie czystych terenów MASŁO EKSTRA OSEŁKA GÓRSKA Naturalny polski produkt z ekologicznie czystych terenów SOBIK DOBRE BO POLSKIE Wyróżnione nagrodą konsumenta LAUR KONSUMENTA 2005 Wyróżnione Srebrnym Laurem Konsumenta R-203677 and three other trade marks.

R-165550

SOBIK argued that OSM in Radoms used similar product packages for butter, in particular these with words “Masło Extra” (extra butter) and “Osełka” (butter pat) written in red font on white or creamy background, and with a layout of words and figurative elements that were similar to these used in the registered trade marks.

R-203677

The District Court in Łódź in its judgment of 30 August 2012 case file X GC 391/10 held that SOBIK failed to show the existence of three products on the market and the competitive behavior of the defendant in respect of infringements of trade marks R-200466, R-200467 and R-195683. However, the Court found the infringement of other two signs and ruled that consumers examine packaging of products, such as butter, from a distance. The Court noted that everyday-use products (FMCG) are displayed in stores next to each other, which may lead to likelihood of confusion, because consumers do not attach so much attention in their selection. The Court also found that OSM was involved in acts of unfair competition by imitating products of SOBIK. OSM filed an appeal complaint.

The Appeallate Court in Łódź in its judgment of 29 April 2013 case file I ACa 1402/12 dismissed it and ruled that OSM was not prohibited from the use of words such as “Masło Extra” or “Osełka”, but the company cannot use similar graphic design for these words on its products that could lead to consumers’ confusion.

Trade mark law, case VI SA/Wa 1340/12

April 4th, 2013, Tomasz Rychlicki

TERRAVITA Sp. z o.o. from Poznan requested the Polish Patent Office to invalidate the international registration of 3D trade mark IR-882978 registered for Chocoladefabriken Lindt & Sprüngli AG for goods in Class 30 such as chocolate and chocolate products. TERRAVITA argued that the international registration is a bar for a Polish company to introduce different chocolate products in a shape of a haze or bunny on the national market.

IR-0882978

The Polish Patent Office in its decision of 15 April 2011 case no. Sp. 314/09 dismissed the request. The PPO ruled that TERRAVITA did not prove that the 3D trade mark lacks distinctive character, and there was no bad faith in the trade mark application, because the Polish company did not provide any evidence that Chocoladefabriken Lindt & Sprüngli seek for the protection in order to forcing royalties and block market access. TERRAVITA filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 December 2012 case file VI SA/Wa 1340/12 repealed the decision of the Polish Patent Office and ruled it should not be enforceable.

Trade mark law, case Sp. 500/10

December 10th, 2012, Tomasz Rychlicki

Bakoma sp. z o.o. from Warsaw requested the Polish Patent Office to invalidate in part in Classes 29 and 30 the right of protection for the 3D trade mark IR-700040 owned by Compagnie Gervais Danone. Some time ago, Danone sued Bakoma for the trade mark infringement, arguing that Bakoma has used similar product packaging for its line of Frutica yoghurts. Bakoma claimed that the sign in question lacks distinctiveness and it was applied in bad faith, because Danone did not intent to use this trade mark in form it was applied for. Bakoma pointed that Danone also owned registered design for a similar packaging, and the registration of trade mark was intended to extend the protection provided for a design, and it could indicate that Danone wanted to bypass the law.

IR-0700040

Danone argued that Bakoma does not distinguish between the concept of functionality and the technical features that may give the impression that the functionality is a prerequisite to prohibit registration. Patent attorneys representing Danone cited judgments of the CJUE and noted that only forms which are simply based on technical solution are not subject to the trade mark registration, and the sign in question clearly lacks of such solutions. Danone claimed that the package has not technical features because the container does not provide a transfer of filling (from a smaller to a larger compartment), it does not prevent from shedding, and it’s not a compact package. In addition, Danone argued that Bakoma failed to prove that at the time of the trade application on the Polish market, there were similar packaging that would prevent registration of an industrial design (formerly called ornamental designs), which means that the design was new. Danone emphasized that the mark at issue can not be used on to market alone, without any label. The French company also provided evidence that the trade mark is recognized by the consumers. At the time of trade mark application, the sign was present on the market for almost 14 years and it has acquired the secondary meaning. Its use was confirmed in advertisements and price lists.

Bakoma argued that the technical solution solves a problem. In this case, as a result, how to mix one component with another, and how to serve it mixed – a solution to this problem is to move the component. These functional features are technical. Such example was even displayed in the commercial movie during the hearing. Bakoma stated that the 3D sign was not distinctive at the date of application, nor it has acquired the secondary meaning, because a 3D form can be a trademark when the average recipient will associate it with the origin of the goods. 3D form can attract the attention of consumers in terms of aesthetics, but it does not mean that it functions as a trade mark. There is no doubt that goods may be aesthetic, may encourage the purchase, but do not work as a sign. In addition, the sign could not acquire secondary meaning because it is used as a technical function, utility function. Bakoma argued that Danone seeks for the right of protection for a sign that was not intended to be used in the applied form. Even, while deciding trademark infringement case, the Appeallate Court ruled that Danone uses in the course of trade a combined mark. Bakoma argued that through the registration of the trade mark Danone wanted to obtain a monopoly on technical solutions with the use of the institution of the right of protection for a trade mark. It is a clear example of bad faith.

On 19 November 2012, the Adjudicative Board of the Polish Patent Office held its hearing, case no. Sp. 500/10. Danone’s representative has requested the PPO to postpone the hearing to allow him to get acquaint with the pleading filed by Bakoma. The PPO acceded, and set a two-week deadline. The PPO obliged both parties to complete all claims in a period of two months, under pain of losing the chance to raise them at a later date. Bakoma also requested the Polish Patent Office to decide on the lapse of the protection for the 3D trade mark IR-700040, however the PPO did not schedule the hearing in this case, no. Sp. 513/08.

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 16/12

May 29th, 2012, Tomasz Rychlicki

POLMOS BIAŁYSTOK S.A. requested the Polish Patent Office to invalidate the figurative 3D trade mark WISENT VODKA PŁ 1764 DISTILLED & BOTTLED IN POLMOS LANCUT POLAND R-191793 owned by Fabryka Wódek POLMOS ŁAŃCUT S.A. POLMOS BIAŁYSTOK is the owner of the figurative trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081 and the 3D trade mark R-85811 depicting a bottle with a blade of grass inside, that were registered with the earlier priority. POLMOS BIAŁYSTOK argued that there exists the risk of misleading the public because of the similarity of trade marks. The similarity is based on the distinctive element – a blade of grass, that is the distinguishing element of Żubrówka bottle, which leads to the fact that consumers associate the brand with these trade marks. POLMOS BIAŁYSTOK provided evidence that Żubrówka is one of the most popular vodka brands on the Polish market, as well as studies on the presence of Żubrówka brand in the market, materials on advertising campaigns, a research on consumer choices in buying of vodkas. The Company also argued that “a blade in a bottle” was commonly associated with Polmos alcohol trade marks in 1999, when the trade mark portfolio was divided between different companies. POLMOS BIAŁYSTOK claimed the reputation of the trade marks R-46050, R-62081, R-80991, R-85811 and R-125 911, the same as the reputation of Żubrówka vodka trade marks that were acquired by the company.

R-191793

POLMOS ŁANCUT argued that the motifs of the wisent and a grass blade will not change the overall assessment of the compared trade marks, and as such, are associated with this type of vodka. In particular, the grass – Hierochloe odorata, which is necessary for the production of this kind of flavoured vodka. POLMOS ŁAŃCUT noted that the appropriation of these elements in favor of one company would not be justified, because it would limit the freedom of the activities of other competing entrepreneurs. POLMOS ŁAŃCUT provided examples of rights of protection for trade marks containing elements such as leaves and fruit of the rowan, drawings of a coconut or cherry, which are the signs used to mark of products in Class 33.

R-62081

The Polish Patent Office dismissed the request. The PPO agreed that mentioned trade marks are reputed, but they were not similar. The PPO also noted that in the case of trade marks for alcoholic beverages, the consumer’s attention is directed primarily at the label and its contents, as part of communicating the essential information about the brand, type and manufacturer of purchased product, and only then – on the other elements, such as the shape of the bottle or its contents. The PPO decided that POLMOS ŁAŃCUT did not derive any benefits from the reputation the earlier marks. POLMOS ŁAŃCUT carefully created its trade mark in order to fundamentally distinguish it from earlier signs owned by POLMOS BIAŁYSTOK. The only common associations that the compared signs raise come down to the fact that they serve to mark the same kind of vodka. CEDC INTERNATIONAL Sp. z o.o., the successor of POLMOS BIAŁYSTOK, filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 3 April 2012 case file VI SA/Wa 16/12 dismissed it. The Court held that the decision of the PPO did not violate the law in force or the methodology for comparison of trade marks. This judgment is not final yet.

Trade mark law, case VI SA/Wa 1242/11

March 26th, 2012, Tomasz Rychlicki

On 23 March 2008, the Polish Patent Office granted the right of protection for the word-figurative 3D trade mark PŁ 1764 R-205770, that was applied for by the Polish company Fabryka Wódek POLMOS ŁAŃCUT S.A, for goods in Class 33 such as vodka. The trade mark represents a glass bottle with a blade of grass put inside, and the crest on the bottle.

R-205770

POLMOS BIAŁYSTOK S.A., the company that was the owner of the word-figurative trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081, registered with the earlier priority of 30 August 1985, for goods in Class 33, filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. POLMOS BIAŁYSTOK claimed similarity of signs and identicality of goods. The Company argued that a blade of grass identifies its product’s image, and the long-term presence on the market caused that the trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081 created the belief of the recipients of this type of goods, that the alcoholic product with a grass motif comes from POLMOS BIAŁYSTOK. The Company also claimed that its trade mark is the reputed one, and provided rich evidence material including certificates of quality and market position of vodka sold in bottles with a blade of grass, market research results and reports confirming a strong position of trade marks owned by POLMOS BIAŁYSTOK, as well as articles published in specialized trade magazines. POLMOS BIAŁYSTOK claimed that POLMOS ŁAŃCUT acted in bad faith because its strategy and intention was to create and to file for the right of protection for a product that would look like the brand of “Żubrówka” vodka, by giving it a full set of protected characteristics of the trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081, and this situation happened long before the filing date of the questioned sign.

R-62081

The Adjudicative Board of the Polish Patent Office dismissed the request and decided that the comparision of POLMOS ŻUBRÓWKA BISON BRAND VODKA and PŁ 1764 trade marks gave no similarities. The blade of grass inside a bottle may give potential customers certain associations that it is a vodka based on wisent grass. The PPO relied on the provisions of § 3 of the Minister of Agriculture and Rural Development of 25 January 2007 on the definition of requirements for certain spirit drinks with geographical indications relating to the Polish territory, which specifies requirements for a spirit drink “Herbal Vodka from the North Podlasie Lowland aromatised with an extract of visent grass. The PPO has decided that the vodka producers could use the trade marks containing a blade of grass to indicate the type of vodka. The PPO ruled that these signs are examples of commonly used vodka bottles that were sold in the 80s and 90s of the last century. Such bottles are also present in considerable numbers in the Polish market. Thus, these signs per se do not possess distinctive characteristics. The Adjudicative Board noted that legal commentators emphasizes that the packaging of a product is now deemed as a “silent salesman”, and its appearance affects decisions of customers. A distinctive and visually appealing packaging may cause the client to choose the particular product. The PPO cited K. Jasińska, Naśladownictwo opakowań produktów markowych w świetle prawa własności intelektualnej (in English: Imitation of packagings of branded products in the light of intellectual property rights), Warszawa 2010. The PPO found these arguments relevant to the package created by POLMOS ŁAŃCUT which, in PPO’s opinion differs from other packages available on the market. POLMOS BIAŁYSTOK filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 24 August 2011 case file VI SA/Wa 1242/11 repealed the contested decision and ruled it unenforceable. The VAC decided that the analysis of similarity between the signs including its reputation, in this case, was not exhaustive. The PPO did not consider the dominant elements that draw the attention of the buyer. Although PPO stated that the compared trade marks are 3D signs, but the examination of these elements was reduced to comparison of packages only, i.e. bottles. Although, the PPO stated that as a principle, the visual aspect of a 3D sign, is the shape of package and its content, but these two issues (the shape and contents) were separated in the analysis carried out in this case. The Court found that the long time existence of the characteristic element of 3D signs owned by Polmos Bialystok that were intended for designating vodka products and alcoholic beverages – a blade of grass placed in a simple, transparent bottle, as a whole can easily sink into the minds of customers and build the strength that distinguishes this kind of packagings. The Court pointed out that POLMOS BIAŁYSTOK provided evidence that the original żubrówka can be recognized by a wisent grass blade in the bottle. This would mean that for consumers, contrary to the assessment of the PPO, this 3D element constitutes the dominant part of the trade mark, and it can also influence the perception of the trade mark reputation and the need for protection against dilution. The VAC noted that this case involved more than 20-year presence in the market of a bottle with a grass inside, that was associated with POLMOS BIAŁYSTOK. However, in situation, when the package is transparent, placing a characteristic element inside of the packaging, determines distinctiveness of the whole sign, e.g. two similar bottles. The distinctive 3D form – a blade of grass in the bottle increases the message of each of the word trade marks, brings more originality to signs that are protected for over 20 years. There was no doubt that the floating grass in the bottle is the original message that distinguishes the goods of POLMOS BIAŁYSTOK, and is attributed to the origin of goods produced by this particular company. It was impossible to overlook the fact that consumers are seeing a bottle with a characteristic blade of grass, that is associated by them not only with visent vodka, but they also have a guarantee that this is the original product whose reputation was proved by complex evidence. This means that customers choose a product, guided by the attractiveness of its form, because they “see” in this product a trade mark that originates from POLMOS BIAŁYSTOK, whose quality is known to them. The fact is that all signs have a distinctive element. The Polish Patent Office erred by not attaching any importance to it, despite the fact that POLMOS BIAŁYSTOK was the first company that introduced to market a product with such a distinctive element: a long blade of visent grass.

See also “Trade mark law, case VI SA/Wa 2038/09“.

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 538/11

July 9th, 2011, Tomasz Rychlicki

This is the continuation of the story described in “Trade mark law, case Sp. 457/08“. Unilever filed a complaint against the decision of the Polish Patent Office in which the PPO decided on the lapse of the right or protection of 3D trade mark R-134678 because of its non-use in the form in which the trade mark has been registered.

R-134678

The Voivodeship Administrative Court in Warsaw in its judgment of 22 June 2011 case file VI SA/Wa 538/11 overturned the decision of the Polish Patent Office and held it unenforceable. However, the Court did not even consider the arguments submitted by the parties. The decision was overturned because of the procedural issues. One of the members of the Adjudicative Board of the Polish Patent Office who was involved in taking the questioned decision did not sign it and later on she retired, therefore, the PPO was not able to obtain her signature. An administrative decision should include at least the name/designation of authority, the addressee of the decision, the conclusion and a signature of the person entitled to issue an administrative decision. If the document lacks a signature, it is not an administrative decision but a draft of such a decision. See also “Procedural law, case IV SA/Po 304/10“. Unilever’s case returns to the PPO where it will be decided on again.

Trade mark law, case II GSK 206/06

April 25th, 2011, Tomasz Rychlicki

On 16 July 1996, the Polish Patent Office refused to grant the right of protection for the figurative trade mark DVORAK IR-639197. On 27 August 2003, the PPO upheld its decision and ruled that the sign in question is similar to two figurative trade marks R-79913 and R-80064 that were registered with an earlier priority for POLMOS S.A., and it violates the rights of third party, by using elements that are incorporated in earlier registered industrial designs Rp-1 and Rp-2 that are also owned by POLMOS.

IR-0639197

The Supreme Administrative Court in its judgment of 18 January 2007 case file II GSK 206/06 held that the registration of a trade mark whose description largely overlaps with the description of the industrial design that was previously registered to another company, without its permission, is a violation of the rights from the registration of industrial designs and meet the grounds for refusal of registration of the mark because it infringes the personal or economic rights of third parties. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case Sp. 457/08

February 21st, 2011, Tomasz Rychlicki

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

Rp-2543

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

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

R-134678

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

R-155952

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

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