Archive for: personal name

Trade mark law, case II GSK 244/13

May 22nd, 2014, Tomasz Rychlicki

On March 2008, the Polish Patent Office has granted to the Politechnika Wrocławska (Wrocław University of Technology) the right of protection for the word-figurative trade mark e e-Informatica R-204692, for goods and services in Classes 9, 16, 18, 25, 35, 41 and 42.


Mr Piotr Chlebowski filed the opposition against the decision of the PPO, and argued that he works on the market (in business) under the business pseudonym Informatica, and has been using that term as a company name that was entered in the register of business activity in 2003. He also uses that name within “a website for his Internet domain”. The term Informatica is also used by Mr Chlebowski on business cards, in advertising, invoices and stamps. He argued that the questioned trade mark also violates his personal rights, because he has started the company under the name Informatica. In addition, he also enjoys the copyright to the term “Informatica”, and the use of that name by the Politechnika Wrocławska is also contrary to regulations provided in the Polish Act on Combating Unfair Competition.

Politechnika Wrocławska requested the PPO to dismiss the opposition and argued that the term Informatica cannot be deemed as personal or economic right or interest. There is no unfair competition because the name Informatica does not lead to consumers’ confusion as to the producer of goods or services.

The Polish Patent Office dismissed the opposition. The PPO ruled the Mr Chlebowski is entitled to his full company name, not only to the term Informatica, and the provisions of the Polish Civil Code raised by the opponent relate to the violation of personal interests, and therefore not personal rights. However, the the mere fact that someone applied for a trade mark consisting of a part of the name of another company is not yet an obstacle to the registration. It is required that the registration and use of the trade mark constitutes a violation of the right to the company name. The average consumer will considers the designation as descriptive for the goods and services related to information technology. However, the figurative element – the first letter “e” – plays the dominant role in the perception of the whole trade mark. The registration of a domain name does not create exclusive property rights that are effective against all (erga omnes – absolute rights). The right to use an Internet domain name is the “relative right” based on the contractual obligation that is effective only with respect to the domain registrar. Mr Chlebowski filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 September 2012 case file VI SA/Wa 917/12 dismissed it, and Mr Chlebowski decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 3 April 2014 case file II GSK 244/13 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that a name of enterprise (business or company) belongs to the category of personal and property rights, which are subject to legal protection, and that these rights may be infringed by the use of the trade mark, because the two signs (the company’s name and a trademark) both identify the company. The SAC noted that the VAC relied on provision of the Polish Commercial Code that for many years were no longer in force, and incorrectly stated that Mr Chlebowski, as a natural person conducting his business activities, is not entitled to the company name. While the the Polish legislature has regulated in the Civil Code in Section III titled “Entrepreneurs and their designation” the right to the company name, which is also entitled to an entrepreneur who is a natural person. Thus, in this case occurred primarily a conflict of a right to the company name and the right of protection for a trade mark. The Supreme Administrative Court stated in its previous case-law, that the name of a company (the firm) is used to identify and differentiate entities in legal and economic transactions. It also serves a carrier of certain information about the characteristics and qualities of their activities. Unauthorized interference with the functions of the company name infringes the right to the name. This infringement is not prejudiced by registration of a trade mark that is identical or similar to the name of another company. Exclusive rights to the company name (firm) are not absolute. Their limits are territorial and objective and are based on actual activity of an entity that uses a given name. Only within these limits a collisions between identical or similar company name and trademark may occur. If different fields of business activities of a person (legal or natural) that is entitled to the company name and the proprietor of a trade mark, do not lead to consumers’ confusion with regard to the identity of companies, or such proprietor of the later trade mark is not using the reputation associated with earlier (identical or similar) company name, it is difficult to talk about the collision of these two rights, and consequently an infringement of an earlier right to the company name by the later mark (see: “Trade mark law, case II GSK 31/06” and “Trade mark law, case II GSK 406/08“). Applying these considerations to the present case, the SAC ruled that the VAC should reconsider and establish such facts as from which time Mr Chlebowski had acted in the course of trade under the company, using in addition to his surname a designation Informatica, what was the scope and of that activity and whether there is a risk of consumers’ confusion as to the identity of his company and the owner of a disputed trade mark. As it was already established in the case-law of Polish administrative courts, while finding an infringement of personal or property rights of third parties by a trade mark registration, it does not matter whether there are specific facts of confusion in trade, i.e. consumers’ confusion as to the identity of the company and the sign. It is enough to determine the potential possibility (likelihood) of such confusion, that in case of companies carrying identical or convergent activities, seems inevitable (see the judgment of the Supreme Administrative Court of 30 March 2006 case file II GSK 3/06, published in electronic database LEX, under the no. 197239). While considering this case, the VAC should also pay attention to the unified position of both the Supreme Court and the Supreme Administrative Court expressed in the case law that in case of a collision between a company name and an applied and/or registered trade mark, the priority is given to the earlier right.

Trade mark law, case XXII GWzt 17/09

June 28th, 2010, Tomasz Rychlicki

Leszek Dudarski sued PRO-MED POLSKA Daniel Celej for the infringement of the CTM KLIMUSZKO no. 003533692. Mr Dudarski is a licensee of this trade mark. The CTM is the surname of Father Czesław Andrzej Klimuszko, the famous priest and herbalist. The right to use the word trade mark KLIMUSZKO and recipes belongs to the church order Prowincja Św. Maksymiliana M. Kolbego Zakonu Braci Mniejszych Konwentualnych w Polsce (Franciszkanów). The order acquired this right by way of inheritance.

PRO-MED POLSKA Daniel Celej used signs such as BRACIA KLIMUSZKO SYROP CZARNY BEZ Z ŻURAWINĄ and Bracia Klimuszko on its syrup products and in advertising. PRO-MED argued that its trade marks and labels of syrup packagings are based on the history of monk brothers Jan and Albert Klimuszko. The folklore story abouth these two monks is known in eastern Poland. The identicality of Klimuszko names was unintended and entirely coincidental.

The Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 21 December 2009 case file XXII GWzt 17/09 ruled that the examination of the risk of confusion is the normative issue, and that there exist similarity of signs and goods. The Court prohibited the defendant from the use of the trade mark BRACIA KLIMUSZKO SYROP CZARNY BEZ Z ŻURAWINĄ in the course of trade and in advertising of syrup products.

Trade mark law, case IV CR 60/88

March 22nd, 2009, Tomasz Rychlicki

The Supreme Court in its judgment of 17 March 1988 case file IV CR 60/88 held that a person whose personal interests, as defined in this case as the right to use the surname, has been infringed by the use of a trade mark, is entitled to protection under the provisions of Article 23 and 24 of the Civil Code – CC – (in Polish: Kodeks Cywilny) of 23 April 1964, published in Journal of Laws (Dziennik Ustaw) No. 16, item 93, with subsequent amendments.

Article 23
The personal interests of a human being, in particular to health, dignity, freedom, freedom of conscience, surname or pseudonym, image, secrecy of correspondence, inviolability of home, and scientific, artistic, inventor’s and rationalizing achievements, shall be protected by civil law independent of protection envisaged in other provisions.

Article 24
§ 1 The person whose personal rights are threatened by someone else’s action, may require the desist of that action, unless it is not illegal. In the event of the infringement one may also require, the person who committed the violation, to fulfill the actions necessary to remove its effects, in particular, to make a statement of the relevant content and appropriate format. According to the conditions laid down in the Code one may also require monetary compensation or payment of an appropriate amount of money for a social purpose indicated.
§ 2 If as the result of a breach of personal rights one has suffered pecuniary prejudice, the aggrieved person may claim compensation based on general principles.
§ 3 The above shall not prejudice the entitlements provided by other regulations, in particular in copyright law and the patent (invention) law.

This protection is afforded regardless of the protection provided in the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

Trade mark law, case II GSK 115/06

October 29th, 2006, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 20 September 2006 case file II GSK 115/06 held that the surname or family name could serve as a trade mark that distinguishes the goods or services of a particular undertaking from goods or services of the same kind that originate from other entrepreneurs. However, in the present case, the owner of the trade mark KOZŁOWSKI R-115647, before he applied for registration of this sign, had the knowledge that for many years before registration of his trade mark, the Kozłowskis family have used their surname to designate products such as brushes and brooms. Pursuant to Article 7(1) of the TMA, as a trade mark may be registered only such a sign, that possess sufficient distinctiveness in normal economic activity. Therefore, the Voivodeship Administrative Court in its judgment of 7 December 2005 case file VI SA/Wa 905/05 properly found that, in the case described above, the purchaser of the goods would have considerable difficulty in identifying the source of origin of goods and reasonably assumed that the trade mark subject of this preceedings does not have a concrete distinctive character.