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Archive for: similarity of signs

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 II GSK 91/10

April 5th, 2011, Tomasz Rychlicki

Biuro Miss Polonia Sp. z o.o. filed a request for invalidation of the right of protection for the word-figurative trade mark “MISS POLONIA WORLD” R-152218 owned by MISS POLONIA A. Aldona Von Laübe from New Britain, USA. Biuro Miss Polonia argued that the registration infringes on its personal interests (the company name) and the Polish company operates on the marker since a long time as the organizer of the annual, national beauty pageant. The Polish Patent Office invalidated the right in question. Aldona Von Laübe filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in Warsaw in its judgment of 17 July 2009 case file VI SA/Wa 337/09. The American company filed a cassation complaint.

R-152218

The Supreme Administrative Court in its judgment of 8 February 2011 case file II GSK 91/10 dismissed it. The SAC ruled that there was no rational arguments that in case of existence of a trade mark similar to the company name, the infringement of personal interests and the rights to company name could take place only in cases when the entire trade mark consist of the company name. The marketing of goods bearing a trade mark that is a confusingly similar to the company name is also the threat to personal interests or property rights. The fact that the questioned trade mark in addition to the words “Miss” and “Polonia” (that were concurrent with the partial company name of the applicant) contained the word “World” did not deprive the applicant of the protection of the company name as a personal interests, because the designation “Miss Polonia” had sufficient distinctive characteristics that would allow for the identification of an applicant and help to distinguish it from other entities.

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).

Trade mark law, case VI SA/Wa 2168/10

March 16th, 2011, Tomasz Rychlicki

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

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

Trade mark law, case 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.

Trade mark law, case II GSK 1088/09

February 19th, 2011, Tomasz Rychlicki

Polish company Śnieżka Invest sp. z o. o. from Świebodzice requested the Polish Patent Office to decided on the lapse of the right of protection for the trademark GOPLANA MICHAŁKI R-139668 owned by Jutrzenka S.A. Śnieżka claimed that the questioned trade was not genuinely used in the period of five successive years after a decision on the grant of a right of protection has been taken. Śnieżka also owns michałki R-72668 trade mark and the company from Świebodzice argued that the market existence of GOPLANA MICHAŁKI sign would interfere its business.

Jutrzenka argued that there existed very serious reasons of non-use – the pending administrative proceedings for invalidation of its trade mark. Jutrzenka claimed that the use of the mark in the course of those proceedings would be irrational and it would expose the company to any future claims of Śnieżka. The PPO in its decision of 1 July 2008 no. Sp. 398/07 held that GOPLANA MICHAŁKI trade mark has lapsed. Jutrzenka filed a complaint. The Voivodeship Administrative Court in Warsaw in its judgment of 26 June 2009 case file VI SA/Wa 81/09 dismissed it. Jutrzenka filed a cassation complaint.

The Supreme Administrative Court in its judgment of 14 December 2010 case file II GSK 1088/09 dismissed the complaint and ruled that the case for invalidation of the trade mark registration does not qualify as an important reason for non-use thereof. The serious reasons should be factual and/or legal obstacles. These may be external events of force majeure nature that are impossible to predict and prevent. All circumstances relating to ordinary business risks, which concerns the current operations of each business cannot be deemes as such obstacles. A legal obstacle,preventing the use of a trade mark may be, for example, an individual administrative act prohibiting the use of the mark.

Trade mark law, case VI SA/Wa 1122/10

February 11th, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 25 October 2010 case file VI SA/Wa 1122/10 ruled that a trade mark application and examination case cannot be decided based on general assumptions and in an automatic way, because it is always resolved with regard to its specific conditions and references. The Polish Patent Office is required to conduct proceedings in such a way as to increase the trust of citizens in the State bodies and public awareness and appreciation of the law. According to the mentioned above principles, the PPO is required to precisely explain the circumstances of the case, respond to all claims and allegations and to include both public interest and the interests of the party, in the decision rendered.

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

February 4th, 2011, Tomasz Rychlicki

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

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

Trade mark law, case VI SA/Wa 827/10

January 31st, 2011, Tomasz Rychlicki

Czech entrepreneur Druchema Drużstvo pro Chemickou Vyrobu a Sluzby requested the Polish Patent Office for the invalidation of the right of protection for TEMPO R-104245 and TEMPO R-154752 trade marks registered for goods in Classes 02 and 03 such as wax paste for maintenance and renovation of car lacquer. Both trade marks are owned by INTER GLOBAL Sp. z o.o. Druchema argued that it owns TEMPO trade mark that was registered in the Czech Republic and INTER GLOBAL was for many years its sales representative in Poland and in this period the representative applied for on its own behalf and obtained trademark protection for TEMPO signs in Poland. The Polish and Czech company entered into an exclusive sales agreement, however, its provision did not include the powers to register TEMPO trade marks. INTER GLOBAL argued that it created and registered different trade marks. The PPO invalidated the rights of protection in its decisions of 5 October 2009 case files Sp. 448/05 and Sp. 449/05 . INTER GLOBAL filed a complaint against both decisions.

R-154752

The Voivodeship Administrative Court in Warsaw in its judgment of 29 October 2010 case file VI SA/Wa 827/10 dismissed the complaint and ruled that it was not necessary for the recognition of bad faith of the applicant for the right of protection for a trade mark, that the the contracting party has used a trade mark identical to a sign of its business partner during their commercial cooperation. It was sufficient that during the commercial cooperation the contracting party has used a trade mark that was very similar to the trademark invalidated.

R-104245

The Voivodeship Administrative Court in Warsaw in its judgment of 29 October 2010 case file VI SA/Wa 828/10 also dismissed the complaint and ruled that many years of cooperation between Polish and Czech entrepreneurs led to the fact that INTER GLOBAL had clear information about Druchema, and how it designates its products. For these reasons, by applying for the protection for the mark in question that was very similar to a trade mark used by Druchema and doing it without its consent and knowledge, INTER GLOBAL was clearly acting in bad faith. Both judgments are not final yet.

Trade mark law, case VI SA/Wa 1650/10

January 24th, 2011, Tomasz Rychlicki

The Polish Patent Office received a request for the conversion of the CTM FOX Petroli S.p.a. application no. 002672533. This sign was applied for the good in Class 4 such as petroleum, industrial oils and greases, lubricants, fuel (including motor spirits). The PPO refused to grant the right of protection because it found similarity between the applied sign and the word trade mark FOX-OIL R-96049 and word-figurative trade mark FOX-OIL R-96843, both registered for goods in Classes 04, 19 and 39 and owned by FOX-OIL I. Olszewska, W. Okoniewski Spółka jawna from Gdańsk. The PPO ruled that the signs share the same word element, and in case of figurative elements, the word FOX has been particularly exposed. FOX Petroli S.p.a. filed a complaint against this decisions.

CTM 002672533

The Voivodeship Administrative Court in Warsaw in its judgment of 13 December 2010 case file VI SA/Wa 1650/10 dismissed it. The Court ruled that the average consumer of a particular type of goods is perceived as a person who is reasonably well informed and reasonably observant and circumspect.

R-96843

The Court confirmed also the consistent opinion that the level of the average consumer’s perception may vary depending on the type of goods or services. The VAC held that the goods belonging to the group of petroleum due to the development of technology (including automotive) are treated as everyday use goods.

Trade mark law, case VI SA/Wa 1127/10

January 13th, 2011, Tomasz Rychlicki

POSTI S.A. applied for the word-figurative trade mark “POSTI Fitea man HERBATKA WSPOMAGAJĄCA ODCHUDZANIE z owocem z czarnego bzu i anyżem doskonały smak świetny efekt” Z-334117 for foods in Classes 05 and 30. The Polish Patent Office refused to grant the right of protection. The PPO ruled that there exist similarity between applied sign and the word-figurative trade mark “fittea” R-178995 owned by “BIOFLUID” Spółka Jawna from Górki Małe. POSTI filed a complaint against this decision.

Z-334117

The Voivodeship Administrative Court in its judgment of 5 November 2010 case file VI SA/Wa 1127/10 anulled the decision. The Court ruled that the PPO examined only verbal elements of both signs. The VAC ruled that the main distinguishing element of marked goods or services is, in principle, the word, because the recipient usually remember the sign and the marked product (service) based on the verbal element/s.

R-178995

However, the principle of the dominant meaning of the word elements in the combined trade marks is fully applicable, particularly when figurative and 3D elements have less distinctive character, or are completely devoid of this ability. This judgment is not final yet.

Trade mark law, case VI SA/Wa 1126/10

January 12th, 2011, Tomasz Rychlicki

POSTI S.A. applied for the word-figurative trade mark “POSTI Fitea HERBATKA WSPOMAGAJĄCA ODCHUDZANIE Z ANANASEM I CZERWONYM GREJPFRUTEM” Z-334116 for foods in Classes 05 and 30. The Polish Patent Office refused to grant the right of protection. The PPO ruled that there exist similarity between applied sign and the word-figurative trade mark “fittea” R-178995 owned by “BIOFLUID” Spółka Jawna from Górki Małe. POSTI filed a complaint against this decision.

Z-334116

The Voivodeship Administrative Court in its judgment of 5 November 2010 case file VI SA/Wa 1126/10 annulled questioned decisions. The Court ruled that the internal characteristics of the trade mark, including descriptive elements (or lack of such) of the goods and services for which it is registered, the market share of trade mark in question, the intensity and temporal and geographical scope of the use, investments in promotion and advertising, the percentage of relevant recipients, who because of the trade mark are able to identify products or services as originating from a particular company, must be taken into account when establishing the existence (or nonexistence) of recognition of the trade mark with an earlier priority.

R-178995

The Court ruled that the PPO should determine the mentioned above conditions and the outcome will help to assess the risk of confusion as to the origin of the goods which may occur if the protection was granted for the sign in question. The judgment is not yet final.

Trade mark law, case VI SA/Wa 785/10

January 4th, 2011, Tomasz Rychlicki

Unilever N.V., the owner of the trade mark SOLERO IR-0622723 and the word-figurative trade mark SOLERO IR-0628636, has requested the Polish Patent Office to invalidate the right of protection for the trade mark SOLEY R-129356 owned by Maria Ziębińska, Stanisław Ziębiński “ICE MASTRY” sp. j. from Czaniec. Unilever claimed that the questioned sign is similar to its earlier registered well-known trade marks and that the Polish company acted in bad faith while applying for the right of protection because in 1997-2001, Unilever and ICE MASTRY were involved in two civil suits (case files V GC 252/97 and V GC 217/98) that have ended in a settlement in which the Polish company commited to discontinue use of the signs SOLER, Soller and SOLLEI. The PPO invalidated the right of protection. ICE MASTRY filed a complaint against this decision.

IR-0628636

The Voivodeship Administrative Court in Warsaw in its judgment of 4 October 2010 case file VI SA/Wa 785/10 held that the date of application for registration under Article 11 of the TMA (these provisions still apply in cases where the trade mark has been applied for registration when the old Act was in force) determines the priority of the right of protection associated with the applied sign (prior tempore potior jure). Thus, by this date all subjective and objective issues related to the right applied for protection must also be assessed, in particular,and whether the applicant has the right to the sign.

Article 11.
Subject to Article 12, priority for obtaining the right deriving from registration of a trademark shall be determined on the basis of its regular filing for registration with the Patent Office.

The Court also noted that the TMA, as well as the Industrial Property Law does not include a provision that would regulate differently the question of the trade mark application, in relation to its subjective and objective elements and that would take into account as authoritative another, later, point in time. Moreover,the adoption at of a later date to assess the qualifications of the applicant, not only would provide an option for revalidation of trade mark applications that were filed in contradiction with the law, or principles of social coexistence (in bad faith), but may also violate other laws. The filing date of an application for the registration of a trade mark should be taken into account when assessing whether the applicant has acted in bad faith, not the date of trade mark registration. The judgment is not final yet.

Trade mark law, case II GSK 258/07

December 13th, 2010, Tomasz Rychlicki

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

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

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

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

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

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

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

November 15th, 2010, Tomasz Rychlicki

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

R-187352

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

R-102350

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

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

November 8th, 2010, Tomasz Rychlicki

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

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

R-181633

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

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

Trade mark law, case no. Sp. 541/07

November 3rd, 2010, Tomasz Rychlicki

On 30 October 2002, Centrum Szybkiej Diagnostyki Kardiologicznej “KARDIOMED” Maciej Żabówka, Maciej Bylica from Tarnów applied for the word-figurative trade mark KARDIOMED for goods in Class 36 and in Class 44 such as rental of medical equipment, devices and medical apparatus. On 1 August 2004, the Polish Patent Office granted the right of protection R-180711.

R-180711

Another Polish entrepreneur, Centrum Kardiologiczne KARDIOMED Lucja Kieras-Deżakowska from Sosnowiec, filed a notice of opposition against the decision of the PPO on the grant of a a right of protection. The opposing party raised a number of arguments: the infringement of the rights to the company name, the misleading nature of the questioned sign, that the application for a trade mark was made in bad faith, confusing similarity. Lucja Kieras-Deżakowska argued that on 8 August 2001 she applied for the wor-figurative trade Mark Kardiomed for goods in Class 44 such as medical services for people in medical consulting rooms, counseling and medical care, m dical diagnostics, echocardiography, ultrasound, electrocardiography, stress tests, heart rate and pressure records, medical examination, physiotherapy, psychotherapy, paramedical services. The decision on the grant of the right of protection R-162886 was given on 6 May 2005. Ms Kieras-Deżakowska claimed the similarity of signs and services.

R-162886

The Adjudicative Board of the Polish Patent Office in its decision of 13 September 2010 case no. Sp. 541/07 dismissed the opposition. The PPO ruled that the services are different. And although the signs do have similarities, it eliminates the risk of confusion. The PPO also noted that the civil court, should assess whether the proprietor has committed an act of unfair competition. As for other grounds of the Board found no evidence to support them. The decision may be appealed against to the Voivodeship Administrative Court in Warsaw.

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

October 20th, 2010, Tomasz Rychlicki

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

Z-336460

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

CTM-002135812

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

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

September 20th, 2010, Tomasz Rychlicki

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

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

Z-298152

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

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