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Archive for: similarity of goods

Trade mark law, case II GSK 839/10

January 17th, 2012, Tomasz Rychlicki

Nufarm Australia Limited, the owner of the trade mark DUAL SALT TECHNOLOGY R-164428 registered for goods in Class 5, requested the Polish Patent Office to decide on the lapse of the right of protection for DUAL IR-0534713 owned by Syngenta Participations AG. Earlier before, Syngenta opposed the registratin of the trade mark DUAL SALT TECHNOLOGY R-164428.

Syngenta requested the PPO to dismiss the request. The Company provided evidence of use of the trade mark DUAL IR-0534713. There were six copies of VAT invoices from the period from 2002 to 2006, of sale of goods bearing the sign “DUAL GOLD 960 EC”, and two newspaper articles concerning this product and the material safety data sheets of “DUAL GOLD 960 EC of August 2005.

The Polish Patent Office decided on the lapse of the right of protection for DUAL IR-0534713 and dismissed the opposition against the registration of the trade mark DUAL SALT TECHNOLOGY R-164428. Syngenta filed a complaint against this decision. The Voivodeship Administrative Court in its judgment of 19 March 2010 case file VI SA/Wa 1807/09 dismissed it. Syngenta filed a cassation compliant.

The Supreme Administrative Court in its judgment of 3 October 2011 case file II GSK 839/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC ruled that the cassation complaint can be based on the following grounds: a) the violation of substantive law by its erroneous interpretation or misuse, or the violation of proceedings rules, if it could affect the outcome of the case. The specific provisions of substantive law or procedural law, which were violated the court of first instance, should be indicated. Furthermore, it should be precisely explained What was the misapplication or misinterpretation – in relation to substantive law, or it should be demonstrated what was the significant impact of the violation of procedural law to decide the case by the court of first instance – in relation to the rules of proceedings. The Supreme Administrative Court cannot change or precise cassation complaints and their grounds, or otherwise correct them, due to limitations resulting from the mentioned rules. If the cassation complaint alleges violation of both substantive law and proceedings, as it was in the present case, the Supreme Administrative Court recognizes the allegation of violation of proceedings, in the first place.

The SAC decided the PPO has erred in its findings because it considered that the evidence submitted on, was from the years 2002-2006, while there was also an invoice from March 2007 on the case file, which was of the relevance to the case. It was a sales invoice of the preparation DUAL GOLD 960 EC 12 XI and DUAL GOLD 960 EC 4X 5 L. Surprisingly, the Supreme Administrative Court acknowledged, that the case facts showed that the trade mark DUAL GOLD lapsed on June 2006, so as a trade mark it ceased to exist on the market from that date (it was not registered). Since the trade mark DUAL GOLD ceased to exist in legal transactions after June 2006, the Polish Patent Office should examine whether this sign could be used in this situation, as indicated on the invoice of March 2007, or perhaps the invoice indicated the use of any other trade mark, for example, the trade mark DUAL, and therefore the Article 170 (1) of the IPL should be applied in this case.

Article 170
1. Subject to paragraph (2), the Patent Office shall dismiss a request for declaring the right of protection lapsed in the case referred to in Article 169(1)(i), if before the submission of the request genuine use of the mark has started or has been resumed.

2. Start or resumption of the use of the trademark after the expiration of an uninterrupted period of five successive years of non-use and within a period of three months preceding the submission of the request for declaring the right of protection lapsed, shall be disregarded, if preparations for the start or resumption of the use have been undertaken immediately after the right holder became aware of possible submission of such request.

3. Paragraphs (1) and (2) shall apply accordingly in the cases referred to in Article 169(7).

4. Loss of a right to use a sign or a symbol, referred to in Article 131(2) incorporated in a trademark shall not constitute a ground for non-making a decision declaring the right of protection for that trademark lapsed, if that sign or symbol ceased to be used in the trademark before a request for the declaration of the right of protection lapsed has been submitted.

In light of this evidence, which were the facts of this case, where a detailed analysis could affect the outcome of the case, it was premature by the court of first instance to rule and to say that, in this case that the genuine use of the mark has not started or has not been resumed, and PPO in this case did not erred in law, because it has analyzed all the evidence gathered. Considering other procedural allegations, the SAC held that administrative courts are not required in justification of its judgments to refer to each decision of Polish or European courts, that were cited by the author of a complaint. Such obligation can not be inferred from any provision of the Polish Act on Proceedings Before Administrative Courts. However, the administrative court should refer to these judgments, of which the applicant derives important arguments for the assessment of the case. In this case, the Court of first instance did not meet this requirement.

The SAC noted that the doctrine of law and case-law indicate that the trade mark proprietor may use its sign in an altered form in connection to the form of a sign that was registered. This alteration however, cannot apply to elements that decide on the distinctiveness of the sign, or may not lead to changes in represented form as a distinctive whole. See the judgment of the Supreme Administrative Court of 24 May 2006 case file II GSK 70/06. The SAC confirmed the high degree of freedom to dispose of a trademark by its proprietor, and cited the judgment of the Supreme Administrative Court of 24 June 2008 case file II GSK 251/08. See “Trade mark law, case II GSK 251/08“. The SAC found that the VAC has not sufficiently analyzed of all substantive rules in the context of this case. However, both situation where the violation of substantive law may happen, i.e., violation of substantive law by its incorrect interpretations or inappropriate use, refer only to cases where the facts of the case were established in no uncertain terms. Otherwise, the alleged breach of substantive law is at least premature. This situation took place in this case, because the author of the complainant cassation alleged in the first place the violation of the proceedings by the VAC. The violation of proceedings was based on the refusal by the court of first instance to repeal the decision issued by the Polish Patent Office, in a situation when that PPO did not adequately explain the facts of the case and did not examine in a comprehensive manner the whole of the evidence.

Trade mark law, case VI SA/Wa 723/11

December 28th, 2011, Tomasz Rychlicki

In 2007, the Polish Patent Office registered the word-figurative trademark citibank handlowy R-190720, for the American company Citibank, N.A., a National Banking Association. In 2008, Citigroup Inc. applied for the word trade mark CITI HANDLOWY Z-337716.

R-190720

The Polish Patent Office refused to grant the right of protection, despite the fact that Citibank N.A. is the sole shareholder of the Citigroup Inc., and Citigroup Inc. provided a letter of consent from its parent company. The PPO decided that both signs would mark very similar goods and services and are directed to the same audience. There is also visuall similarity, caused by common elements. The PPO noted that it is not obliged to take into account the letter of consent issued by Citibank, N.A. Citigroup Inc. filed a complaint against this decision.

The Voivodeship Administrative court in Warsaw in its judgment of 9 December 2011 case file VI SA/Wa 723/11 dismissed it. The Court held that the PPO correctly examined all evidence and properly decided on the similarity of signs. The VAC noted that that letters of consent may be evidence in proceedings, but they do not bind the PPO. The VAC pointed to the judgment of the Supreme Administrative Court of 20 December 2007 case file II GSK 279/07. The SAC held that a letter of consent cannot be used as ground to register a trade mark since the Republic of Poland did not implement Article 4(5) of the First Council Directive 89/104.

Trade mark law, case VI SA/Wa 334/11

December 13th, 2011, 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 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. This judgment is not final yet. A complaint can be brought to the Supreme Administrative Court.

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

December 6th, 2011, Tomasz Rychlicki

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

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

Trade mark law, case VI SA/Wa 875/11

October 27th, 2011, Tomasz Rychlicki

Juliusz Marek Nabiałek who owns the word-figurative trade mark Platan R-210901, filed a request for invalidation of the word-figurative trade mark PLATANUS OGRODY NATURALNE R-210602 registered for Przemysław Sochański. Mr. Nabiałek claimed that both signs are similar and cause the risk of misleading the public as to the origin of goods and services, especially since most goods and services are identical.

R-210901

Mr. Sochański claimed that he cooperated with Mr. Nabiałek in years 2001-2005. He emphasized that Mr. Nabiałek, without his knowledge or consent registered the trade mark Platan in 1995, but it was the name of a company that was founded by Sochański. In March 2007, he learned about this registration when he was served with the cease and desist letter prohibiting the use of the name Platan. Therefore, Sochański applied on 15 March 2007, for the right of protection for PLATANUS OGRODY NATURALNE trade mark. Therefore, he thought that the request for invalidation is a malicious and solely personal action. Mr Nabiałek decided to narrow the request only for services in Class 42 such as services in architecture, biological research, advice on environment protection. The Polish Patent Office invalidated the right of protection. Sochański filed a complaint against this decision.

R-210602

The Voivodeship Administrative Court in Warsaw in its judgment of 3 October 2011 case file VI SA/Wa 875/11 overturned the decision of the Polish Patent Office and held it unenforceable. The Court ruled that both trade marks are not similar and the similarity of goods and services is reduced only to their common numbering according to the Nice Classification. The VAC ruled that there was violation of the provisions of the administrative procedure, because the PPO did not consider all of the evidence required to decide the case, and has not indicated why certain facts were accepted as proven, and why others were denied the credibility and probative value.

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

October 6th, 2011, Tomasz Rychlicki

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

R-182895

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

R-203339

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

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

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

Trade mark law, case VI SA/Wa 262/11

October 2nd, 2011, Tomasz Rychlicki

The Polish Patent Office refused to recognize the protection of the FERRERO OPERA IR-0891152 trade mark owned by SOREMARTEC S.A. The PPO decided that there are already registered similar or identical trade marks owned by Ferrero S.p.A.

SOREMARTEC argued that there is no real risk of misleading the public as to the origin of goods bearing signs question, due to the fact that these trade marks are owned by closely related companies, and the goods are produced by all companies according to uniform quality standards. The Company presented documents confirming relationship between the companies, and submitted also a letter of consent.

The PPO agreed that there are regulations on letters of consent provided in the Polish Industrial Property Law. According to this provisions the owner of a lapsed trade mark may agree for a registration of a new trade mark, but the Polish legislator did not foresee similar rules relating to the signs remaining in force. However, and this is not a legal loophole. This rule is clear and there are no doubts. There’s an exception to that rule but it is very limited and it should not be interpreted broadly. As the PPO noted this is a classic example of a positive-negative regulation that is used in the legislation. As a contrario interpretation, Article 133 of the IPL sets two standards: a positive – that permits registration of the trade mark after obtaining the consent of the owner of an earlier mark that has lapsed, and negative – it does not allow for consent letters for the other collision (i.e. with signs of remaining in force, renown, reputed signs, etc.).

Article 132
1. A right of protection shall not be granted for a trade mark in respect of identical or similar goods, if the trade mark is identical or similar to:
(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.

Article 133
The provision of Article 132(1)(iii) shall not apply where the protection has terminated under Article 169(1)(i) or the right holder of the earlier right has given his consent for the later trade mark being granted a right of protection.

The Supreme Administrative Court in its judgment of 20 December 2007 case file II GSK 279/07 supported this interpretation. The SAC ruled that the provision of Article 4(5) of the First Council Directive 89/104 has not been implemented into Polish law, and it was futile to rely on the infringement of this provision, because such a consent has not the legal effect under Polish law. See “Trade mark law, case II GSK 279/07“. The examination system was adopted for the registration of trade marks in Poland. Letters of consent do not eliminate the risk of consumers’ confusion as to the origin of goods. This fact must therefore be taken into consideration during the examination of applied trade marks. The sign has to distinguish one entrepreneur from another entrepreneurs. The capital group is the association of many entrepreneurs linked to each other in different ways. If the goods are actually marketed by such a group and do not cause the confusion of consumers, the institution of a joint right of protection. The obligatory regulations governing use of trade marks adopted by the undertakings who have jointly applied for the trade mark protection, ensures that the signs will not be misleading at the time of filing the trade mark application, but also during their existance on the market. However, one can not assume in advance that the signs coming from companies that are linked organizationally and financially do not mislead consumers. There always will be a risk of consumers’ confusion. During the application proceedings, it is not possible for the PPO to examine the policy of big companies in order to identify the origin of each product offered. Therefore, if a number of separate legal entities want to use a similar trade mark, they must, in accordance with Polish law, to use the institution of a joint right of protection or simply trade mark licenses. There is no legal justification to treat the origin of signs from companies linked organizationally and financially as a guarantee of the absence of the risk of consumers confusions as to the origin of these goods.

The Voivodeship Administrative Court in its judgment of 17 May 2011 case file VI SA/Wa 262/11 overturned the decision of the Polish Patent Office and held it unenforceable. The VAC agreed with the PPO that in principle, the mere letter of consent that was issued by a company that was unrelated organizationally and/or legally with entitled to the trade mark application, is not a basis for registration of a mark identical or similar. However, this document was not the only document on which SOREMARTEC relied to demonstrate the lack of the risk of conumers’ confusion. When examining the collected evidence material the PPO completely ignored the fact that the applicant has a number of trade marks with the word element “Ferrero” including signs from the earlier priority than the opposed trade marks. In addition, the VAC noted that SOREMARTEC owns trade marks containing the “Ferrero” element which were registered by the PPO on the basis of letters of consent.

Trade mark law, case II GSK 746/10

September 2nd, 2011, Tomasz Rychlicki

This is the continuation of the story described in “Trade mark law, case VI SA/Wa 1988/09“. Kraft Foods Polska filed a cassation complaint.

R-91506

The Supreme Administrative Court in its judgment of 12 July 2011 case file II GSK 746/10 dismissed the complaint and held that the reputation of the trade mark and homogenity goods bearing the signs at issue – even if they could be taken into account while assessing the likelihood of confusion – cannot challenge the established view that there is the lack of similarity between these trade marks. The Court decided that trade marks that were subject to the opposition proceedings do not contain a common element being the same surname, because the meaning of the POLO word in these trade marks is different.

Trade mark law, case II GSK 269/10

August 5th, 2011, Tomasz Rychlicki

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

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

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

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

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

Trade mark law, case VI SA/Wa 1901/10

July 15th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for the word-figurative trade mark VILLA PARK WESOŁA R-171029 owned by “VILLA PARK WESOŁA” Spółka z o.o. The request was filed by MPM PRODUCT Spółka z o.o. the owner of the word trade mark “villa park” R-139436 that was registered with an earlier priority. MPM filed also a civil suit against “VILLA PARK WESOŁA” Spółka z o.o. claiming the infringement of its trade mark rights. However, the court dismissed the injunction.

R-171029

“VILLA PARK WESOŁA” Spółka z o.o. decided to file a complaint against the decision of the PPO. The Company claimed inter alia that even a civil court shared the company’s argument stating that there is no risk of confusion in a group of relevant recipients of services bearing the trademarks at issue.

The Voivodeship Administrative Court in Warsaw in its judgment of 24 March 2011 case file VI SA/Wa 1901/10 dismissed the complaint and ruled that, undoubtedly, the Polish Patent Office, while considering the specific case at issue, acts under certain laws and regulations. In such situation one must understand that the PPO does not decide on the case based upon the judgments of the courts. This, of course, does not mean that if the specific circumstances of the case allow for taking into account the judgment, the Patent Office may not decide on a case in accordance with a convergent judicial decision issued in a similar case. This judgment is not final yet.

Trade mark law, case Sp. 207/10

May 21st, 2011, Tomasz Rychlicki

On 27 May 2008, the Polish Patent Office registered the word-figurative trade mark FORTUNA WARZYWNA KAROTKA STANOWCZA Z TABASCO I KOLENDRĄ R-209338. This sign was applied for by the Polish company Agros Nova sp. z o.o. from Warsaw for goods in class 32 such as juices, nectars and vegetable beverages, multi-vegetable nectars and vegetable beverages with the addition of micro and/or macroelements and/or vitamins and/or substance supporting the metabolic processes and/or flavorings, spices and herbs, sports and energy drinks, products for production of beverages: extracts, essences and concentrates, seasonings, and syrups, instant drinks.

Mc Ilhenny Company filed a request for invalidation of Agros’ trade mark. Mc Ilhenny is the owner of the word trade mark TABASCO R-51500 registered with the earlier priority of 24 March 1973, in class 30 for pepper sauce.

The Adjudicative Board of the PPO in its decision of 11 May 2011 case no. Sp. 207/10 dismissed the request. The PPO ruled that there is no likelihood of confusion between both trade marks because Agros’ trade mark is a label with rich graphics, where the words “karotka” and “fortuna” are located in a central position, and the word “Tabasco” is placed below and it’s not a dominant element of the whole sign. It only appears at the bottom of the label, and is written in a small font. This decision is not final yet. A complaint can be brought to the Voivodeship Administrative Court in Warsaw.

Trade mark law, case VI SA/Wa 1860/10

April 21st, 2011, Tomasz Rychlicki

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

R-65340

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

R-151141

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

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

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

Trade mark law, case II GSK 259/10

April 7th, 2011, Tomasz Rychlicki

Mariusz Lech Przedsiebiorstwo Produkcyjno-Handlowo-Uslugowe LECH-POL from Lask requested the Polish Patent Office to invalidate the right of protection for the word trade mark “lech wódka” R-145285 registered for Fabryka Wódek POLMOS ŁAŃCUT S.A. for goods in class 33 such as alcoholic beverages: vodka. Mariusz Lech argued that the questioned trade mark is confusingly similar to his word-figurative trade mark LECH-POL R-132854 and the word trade mark “mariusz lech” R-113305, both registered for good in class 33 such as alcoholic beverages.

The PPO dismissed the request and noted that Mr Lech’s trade mark were not genuinely used for all goods. In 2007 the PPO decided on the lapse of the protection rights for both trade marks in all goods except wines, this cases went through all instances. See “Trade mark law, case II GSK 708/08“. Therefore, the compared goods are different due to existing specialization in the alcohol industry and the awareness of that specialization among potential customers is also important, because the average buyer is aware that the vodka manufacturer does not produce wine, and vice versa. These trade marks may exist on the market without collision. Mariusz Lech filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 16 October 2009 case file VI SA/Wa 1050/09. LECH-POL decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 10 February 2011 case file II GSK 259/10 dismissed it. The SAC ruled that the conditions of production of wines and vodka are different. The packagings and sealing of such goods differs and there are different conditions of sale of such products. Vodka in not sold in the wineries, and in case when both types of goods are in a shop, (usually displayed on different shelves in malls), their location is clearly separable. The development of shopping centers and various self-service shops of retail chains, makes the criterion of sales conditions less important when it is used for assessing the similarity of the goods. The Court noted that vodka and wine, because of varying alcohol content, must be treated as different types of alcoholic beverages, which is also reflected in the provisions the Polish Act on Upbringing in Sobriety and Counteracting Alcoholism of 26 October 1982 and the permits that are granted under this Act for trade and service of alcoholic beverages are issued separately for each kind of beverage from a separate pool of permissions. The Court also ruled that the incidental possibility that the producer of wines and spirits is the same entity does not lead to the conclusion that these beverages are of one type.

Trade mark law, case VI SA/Wa 1850/10

March 28th, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 18 January 2011 case file VI SA/Wa 1850/10 noted the trade mark law of Western countries has developed the principle that in the event of a conflict between two signs all doubts should be decided in favor of the owner of a trade mark with the earlier priority. This principle is a simple consequence of the belief that the entrepreneur who choose a trade mark that will be used for marking the same type of goods and that is similar to the mark with an earlier priority, is acting at his or her own risk and all uncertainties should be decided against him/her.

Trade mark law, case II GSK 56/10

March 25th, 2011, Tomasz Rychlicki

The Polish Patent Office registered the word trade mark TRIMEGAL R-177593 for Farmaceutyczna Spółdzielnia Pracy GALENA for goods in Class 5 such as pharmaceutical preparations. NOVARTIS AG filed a notice of opposition. The Swiss company claimed TRIMEGAL is similar to its trade mark TRILEPTAL IR-0560245 registered for goods in Class 5 such as pharmaceuticals. The PPO dismissed it. Novartis decided to file a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 12 August 2009 case file akt VI SA/Wa 581/09 dismissed it, and NOVARTIS filed a cassation complaint.

The Supreme Administrative Court in its judgment of 18 January 2011 case file II GSK 56/10 held that in the case of the final recipients of pharmaceuticlas that are labeled with TRIMEGAL or TRILEPTAL trade marks it is hard to tell about the existence of likelihood/risk of confusion. The Court noted that it should be remembered that these signs are used for the determination of drugs that are used for different illnesses such as heart disease and epilepsy. Patients who are suffering from such illnesses are deemed according to the SAC as the “aware consumers” of their prescription drugs. Moreover, the so-called “post-sale risk of confusion” can be considered only when the patient with epilepsy, also suffers from heart disease, because only then in his medicine cabinet at home can be found both drugs bearing this two marks in question. The differences between both marks are sufficient to exclude any risk of confusion and to ensure the existence of the two signs on the market without any collision. Therefore, the view that TRIMEGAL is similar to TRILEPTAL in a way that excludes the possibility of distinguishing this two signs, in fact, would limit the possibility to use other trademarks with the informational prefix TRI- (triple).