Archive for: trade mark co-ownership

Trade mark law, case II GSK 2062/13

January 30th, 2015, Tomasz Rychlicki

Transformation and economic changes in Poland after 1990 left a lot of problems in the case of trademarks that belong to the state-owned enterprises. The case described below is one of many examples.

PPHU HERBAPOL spółka z ograniczoną odpowiedzialnością requested the Polish Patent Office to invalidate the word-figurative trade mark Herbapol Wrocław R-179901 that was registered for Wrocławskie Zakłady Zielarskie HERBAPOL Spółka Akcyjna for goods in Classes 3, 5, 30, 31 and 32. PPHU HERBAPOL argued that the questioned registration was applied for in bad faith and this sign is similar or identical to registration owned by PPHU HERBAPOL such as the word trade mark HERBAPOL R-00312 or the word-figurative trade mark HERBAPOL R-00356. PPHU HERBAPOL stressed that the goods are identical, are intended for the same consumers, on the same territory. The Company argued that according to the provisions of the Polish Industrial Property Law and regulations governing the use of Herbapol collective trade marks, the right to use this sign should be entitled only to PPHU HERBAPOL, and all affiliated entities, which also include HERBAPOL S.A., and the registration of an individual trade mark identical or similar to a collective trade mark Herbapol may only be made for the benefit of the PPHU HERBAPOL. Therefore, HERBAPOL S.A. obtained the right of protection “illegally”. It was emphasized that the right for the protection of the collective trade mark does not grant exclusivity to use the sign to one entity, because it is reserved for the organization with the right to its use by the organization and all of its affiliated entities. HERBAPOL S.A. is both a shareholder of PPHU HERBAPOL and the entity authorized to use the collective trade mark. Therefore, HERBAPOL S.A. was fully aware that its trade mark application was made without the knowledge and consent of PPHU HERBAPOL, which infringed PPHU HERBAPOL’s right of protection for the collective trade marks.

HERBAPOL S.A. requested the PPO to dismiss the case. The Company presented a genealogy of the transformation of the state owned company that was originally the sole owner of the Herbapol trade mark, and argued that PPHU HERBAPOL derives its priority to Herbapol sign “secondarily”. In this context, and bearing in mind that PPHU HERBAPOL does use the sign and not produce any goods under the name Herbapol, PPHU HERBAPOL is not the legal successor of the state enterprise. Consequently, HERBAPOL S.A. argued that PPHU HERBAPOL lacks of legal interest in seeking the invalidation of the disputed right of protection, and PPHU HERBAPOL did not object to the use of questioned sign in five years.

The Polish Patent Office invalidated the right of protection. The PPO decided inter alia that compared signs are similar in all three aspects, and the goods are identical or similar. HERBAPOL S.A. filed a complaint against this decision and argued that currently, between all companies included in PPHU HERBAPOL, there are no capital ties, on the contrary, they are in the classic competitive relationship, therefore as of the 1993/1994 they all began to use geographical designation like Wrocław, Poznań or Lublin alongside the sign Herbapol. Since then, HERBAPOL S.A. incurred large spending on advertising of its products thus the recipients of its products were able to distinguish the mark from other manufacturers that used the sign Herbapol. For these reasons, the HERBAPOL S.A. believed that its designation obtained independent and individual market position. HERBAPOL S.A. also argued that it has acquried the right to use Herbapol sign before PPHU HERBAPOL, because since 1959, it has used the word Herbapol in the company name. The state owned company Zjednoczenie Przemysłu Zielarskiego “Herbapol” in Warsaw applied for the right of protection for Herbapol trade mark in 1974, however in 1982 the company was dissolved and in its place another entity was created. Therefore, the right of protection has expired in 1984. PPHU HERBAPOL was founded in 1989 and in the same year the Company requested the Polish Patent Office to change the owner of all Herbapol trade marks in the Register kept by the PPO. From the foregoing, HERBAPOL S.A. brought the conclusion that the right to Herbapol sign should not derived by PPHU HERBAPOL from the “material priority”, but its right has kind of secondary nature.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 June 2014 case file VI SA/Wa 101/13 dimissed the complaint and ruled that because this case involved a collective trade mark, the Court had to indicate the nature of this type of sign. The main conclusion is that the right to collective trade mark belongs to the organization, but the organization’s affiliated entities are entitled to use the sign. The VAC cited recent judgment of the Supreme Administrative Court of 27 June 2007 case file II GSK 83/07 in which the SAC held that a collective trade mark serves many entities, although the right of protection is granted for a specific organization. The right to a trade and the right to use it separated. This institution should be distinguished from the joint right of protection, which is related to an individual trade mark, where such sign is intended for concurrent use by several undertakings who have jointly applied for the protection. In other words, the right of protection for a collective trademark does not grant exclusive rights to the use the sign by a single entity, but it’s owned by one organization, and it can be used by many entities associated in this organization. However, only the organization may be awarded the right, sell it, waive this right or request a change in the Register. Therefore, HERBAPOL S.A. infringed on registrations owned by PPHU HERBAPOL. With regard to the argument that PPHU HERBAPOL was not genuinely using the Herbapol collective trade mark, the Court noted that the organization may independently use the collective trade mark, however, the use of such sign only by entities affiliated also fulfills the conditions of trade mark use.

HERBAPOL S.A. filed a cassation complaint. The Supreme Administrative Court in its judgment of 9 January 2015 case file II GSK 2062/13 dismissed it.

Categories: Art. 129(2)(ii) IPL | Art. 131(2)(i) IPL | Art. 132(2)(ii) IPL | bad faith | Polish Act on Industrial Property Law | Polish courts | Polish institutions | Polish law | Polish Patent Office | Polish Supreme Administrative Court | similarity of goods | similarity of services | similarity of signs | trade mark co-ownership | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 487/12

June 27th, 2013, Tomasz Rychlicki

On May 2006, the Polish Patent Office granted the joint right of protection for the word-figurative trade mark SILMENT R-175055 for three Polish entrepreneurs – Stanisław Wilk, Jan Kosmala and Marek Siemiński. Mr Wilk requested the PPO for a change in the trade mark register. According to the donation agreement of January 2010, he has transferred to his son 1.65% of 33% of his share in the right to the trade mark. On June 2010, the PPO entered the name of his son and deleted Stanisław Wilk, however, after the request for re-examination, the PPO made another changes in the column A of the trade mark register, and entered both father and son as co-owners. Mr Kosmala filed a comaplaint against this decision. He argued that the supplied evidence did not allow for making such amendments. Mr Kosmala did not agree that a part of 33% share could be transferred to another person, because according the agreement of 2004 on the joint ownership, that was signed between Kosmala, Siemiński and Wilk senior, any joint owner could make a donation of the joint right to the right of protection for a trade mark SILMENT R-175055 only to the spouse and descendants of the first group of inheritance.

R-175055

The Voivideship Administrative Court in Warsaw in its judgment of 25 October 2011 case file VI SA/Wa 1409/11 noted that between co-owners to the trade mark SILMENT arose a dispute over the interpretation of the agreement. The Court ruled that, in principle, the right of protection for a trademark may be assigned or be subject to succession. The transfer of the right of protection may be effected only with the consent of the parties who enjoy that right. The agreement of assignment of a share in the joint right of protection should be only valid subject to the consent given by all of the joint owners. When examining the request for the change in the trade mark register, the PPO should investigate whether the submitted documents, supposed to provide grounds for taking a decision on entry in a register, are in accordance with this Polish Industrial Property Law and satisfy the effective provisions as to form. The entries should not be binding on an authority whose responsibilities, under the provisions of law, include deciding on a document founding the decision on entry in a register or in a case, the outcome of which may affect a decision of the Polish Patent Office on entry in the register. The “registry-entry” proceedings are designed to adjust the content of an entry with the current legal status, and a decision on the entry into the trade mark register has only a declaratory nature and it not a source of trade mark rights. Therefore, the cognition of the Polish Patent Office in matters of entries in the registry, is strictly defined. This means that while investigating the request for a change, the PPO cannot exceed those limits. As a result, the PPO cannot investigate the regularity of both the preparation of the documents submitted as a basis for entry in the registry, as well as make their interpretation. As there is dispute between the parties over the interpretation of the agreement, the PPO cannot agree to the interpretation of one of the parties. These doubts have to be resolved by a civil court. And if such dispute has not been initiated by a party, the PPO should stay proceedings and call the party to apply to the competent court, within the prescribed time, to provide a preliminary decision on the issue which is a condition of the settlement in the main case. Therefore,the Court annulled the contested decision, ruled it unenforceable, and ordered the PPO to consider the Court’s arguments during re-examination of the case.

The Supreme Administrative Court in its judgment of 20 June 2013 case file II GSK 487/12 dismissed the cassation complaint. The SAC held that the controversy concerning the effects of the donation agreement in the light of the content of the co-ownership of a trade mark rights, has to be resolved by a proper civil court.

Categories: Art. 107 §3 APC | Art. 162 IPL | Art. 229 IPL | Art. 229(1) IPL | Art. 245 IPL | Art. 8 APC | Art. 97 §1 APC | Polish Act on Industrial Property Law | Polish Administrative Proceedings Code | Polish Patent Office | trade mark co-ownership | trade mark register | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 635/07

October 27th, 2010, Tomasz Rychlicki

Okręgowa Spółdzielnia Mleczarska from Nowy Sącz requested the Polish Patent Office to disclose a copy of the Rules of the use of word trade mark bryndza Z–248134. Bryndza is a sheep milk cheese produced in Poland and other Eastern European countries. OSM from Nowy Sącz is also a producer of that type of cheese. In 2003, OSM applied for the right of protection for word-figurative trade mark TERMIZOWANA Bryndza sądecka Z-259477 and argued that the copy of Rules is required to analyze whether OSM may use the name bryndza for its product. The word trade mark bryndza Z-248134 was applied for by Regionalny Związek Hodowców Owiec i Kóz (Regional Union of Sheep and Goat Breeders) from Nowy Targ, as the collective guarantee trademark. Such trade mark can be registered for any organisation enjoying the status of legal entity, which itself refrains from using the trade mark, but undertakings being members of such organisation may use this trade mark if they follow the Rules laid down in the regulations governing use of trade marks adopted by the entitled organisation and are liable to control by that organisation to this extent. A holder of the right of protection for a collective guarantee trademark may not, without important reasons, deny the undertakings, which meet the conditions specified in the Rules, the right to use that trademark.

The PPO refused to disclose the Rules, because at that time, the case was under examination and at this stage of proceedings, all trade mark application’s files can be shared only with the consent of the applicant. OSM filed a complaint against the PPO. The Voivodeship Administrative Court in Warsaw ordered the PPO to reconsider the case. After rehearing, the PPO refused to disclose the Rules and decided that the OSM did not have legal interest (locus standi) in requesting the access.

The Voivodeship Administrative Court in Warsaw in its judgment of 26 June 2007 case file VI SA/Wa 635/07 ruled that the PPO is obliged to disclose the Rules, because OSM posses legal interest in this particular case. The Court noted that OSM is producing a food product with defined parameters bearing the name “bryndza”. The text of the Rules determines whether OSM will be able to continue and freely conduct its business activities in part on the production of sheep cheese. Or – on the contrary – without complying with the Rules will be infringing the trade mark.

Categories: Art. 143 IPL | Art. 148 IPL | Art. 251 IPL | Art. 252 IPL | Polish Act on Industrial Property Law | Polish courts | Polish institutions | Polish law | Polish Patent Office | trade mark co-ownership | Voivodeship Administrative Court.

Trade mark law, case II GSK 248/06

July 21st, 2007, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 55/06“. Piotr Dyszkiewicz and Zbigniew Anozy – both partners of civil partnership, unsatisfied with the judgment of the Voivodeship Administrative Court in Warsaw, have filed a cassation complaint.

Z-223847

The Supreme Administrative Court its judgment of 22 March 2007 case file II GSK 248/06 repealed both the questioned order of the Polish Patent Office and the judgment of the VAC. The SAC based its conclusions on procedural matters. According to the SAC, all problems discussed by the VAC with regard to the co-ownership of THERMO SHIELD Z-223847 trade mark application and partners who quit the cvil partnership, were not a procedural issue, but it concerned very important merits, namely, who should be granted the right of protection for the trade mark for certain goods. The provisions the IPL does not provide that such an issue could be resolved by the order in the proceedings, i.e. before the adoption of a decision of the Polish Patent Office on the termination of the proceedings regarding THERMO SHIELD Z-223847 trade mark application. This is a substantive matter and a conclusion can be taken only in the decision of the PPO issued in proceedings involving all the people who made the trade mark application as partners of the civil partnership.

Categories: Art. 120(1) IPL | Art. 120(2) IPL | Art. 162 IPL | Art. 168 IPL | Art. 325 IPL | case law | Polish Supreme Administrative Court | trade mark co-ownership | trade mark refusal | trade mark register | trademark law.

Trade mark law, case VI SA/Wa 55/06

July 21st, 2006, Tomasz Rychlicki

On 8 September 2000, partners of a civil partnership, filed an application for word-figurative trade mark TERMO SHIELD Z-223847. This application was filed by natural persons, since these are separate entrepreneurs. Civil partnership is formed through an agreement by the partners to achieve a common business purpose. The civil partnership does not qualify as an entrepreneur. The term entrepreneur should be used only to partners of a civil partnership, and not to a partnership itself. Civil partnership has no legal personality and has no legal capacity (a capacity to be a party in legal proceedings).

Z-223847

Two partners resigned. The other filed a request to the Polish Patent Office (PPO) to make change in the Trade Mark Register with regard to persons entitled from the application. The PPO refused to make such changes. The Polish Patent Office has recognized that this was only a withdrawal from the agreement concluded between individuals. The individual partners are separate entities for the PPO and others, and the right to the applied trade mark is a co-ownership/joint tenacy. The withdrawal of two partners can not affect the change of the holder of the trade mark application according to article 162(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

Article 162
1. The right of protection for a trademark may be assigned or be subject to succession. The provisions of Article 67(2) and (3) shall apply accordingly.
11. The right of protection for a trademark may be transferred to the organizations referred to in Articles 136 and 137 as a collective trademark or collective guarantee trademark respectively or to a number of entities as a collective right of protection.
12. Transfer of the right of protection, referred to in paragraph (11) may be effected only with the consent of the parties who enjoy that right.
13. Entry in the trademark register of the transfer of the right of protection, referred to in paragraph (11) after the regulations governing use of the trademark, referred to in Article 122 (2), Article 136(2) or Article 137(1) have been submitted.
14. A collective right of protection may be transferred to a single party as a right of protection for a trademark.
2. (deleted)
3. The right of protection for a collective trademark may be assigned as a joint right of protection to the undertakings grouped in the organisation referred to in Article 136. The contract of assignment shall determine the rules governing the use of such trademark to the extent to which it is practised in respect of the regulations referred to in Article 122(2).
31. A collective right of protection may be transferred to the organizations referred to in Articles 136 and 137 as a collective trademark or a collective guarantee mark. A contract for the transfer of the right should specify the rules governing use of that trademark to the extent as it is provided for in respect of the regulations referred to in Article 136(2) and Article 137(1) respectively.
4. The right of protection for a trademark may also be assigned in respect of certain goods for which the right of protection has been granted, if the goods for which the trademark remains registered on behalf of the vendor are not of the same kind. Once assigned, the right in question shall be dealt with as independent of the right enjoyed by the vendor.
5. The contract of assignment of a share in the joint right of protection shall be valid subject to the consent given by all of the joint owners.
6. Paragraphs (1), (3) to (5) shall apply accordingly to the right deriving from an application filed with the Patent Office, for which no right of protection has yet been granted.

The basis for the change of the persons applying for trade mark protection should be a waiver or transfer of this right. In this case, it did not happen. The PPO does not intervene in the mutual settlement between the partners. It is an internal matter of their contractual relationship.

Two dissatisfied partners filed a complaint with the court. The Voivodeship Administrative Court in Warsaw in its judgment of 13 April 2006 case file VI SA/Wa 55/06 has recognized that all partners of the civil partnership applied for protection of the trade mark in question. The Court agreed with the PPO, that the mere resignation of the two partners may not affect the change of the holder of the trade mark application. The basis for the change in Trade Mark Registry may be the court order on the settlement between the partners in the property (the right of protection for a trade mark is the economic right), or the waiver of the right to trade mark application or its disposal or transfer. This requirement follows from articles 67(2), 162(1) and 168 of the IPL.

Article 67
1. The patent may be assigned or be subject to succession.
2. The transfer contract shall be in writing on pain of invalidity.
3. The transfer of a patent shall be binding on third parties as from the date of its entry in the Patent Register.

Article 168
1. The right of protection for a trademark shall lapse:
(i) on expiry of the term of protection for which it has been granted,
(ii)on surrender of the right by the owner thereof before the Patent Office, with the consent of the parties having their rights therein.
2. The surrender of the right, referred to in paragraph (1)(ii), may also concern only certain goods for which the right has been granted (restriction of the list of the goods).
3. The surrender of a share in the joint right shall result in the transfer of the share on behalf of the other joint owners, proportionally to their shares.
4. Subject to paragraph (3), in the case referred to in paragraph (1)(ii), the Patent Office shall take a decision on the lapse of the right of protection.

The Court held that the IPL is a lex specialis in relation to the Civil Code. The PPO would infringe on the rights of partners the civil partnership if it has made changes to the Trade Mark Registry with regard to entitled persons, only on the basis of changes in composition of the civil partnership. The settlement between the partners is not a cognition of the Polish Patent Office. The order of the PPO does not create the composition of the civil partnership by establishing that the partners who left are engaged in representing the company. Only the agreement on the civil partnership determines who is a partner of such a civil partnership. The order of the PPO concerns only their right to the application for the grant of a right of protection for a trade mark. This right has the nature of co-ownership/joint tenacy of all partners, unless it is regulated different as described above, i.e. by he settlement between the partners in the property, or the waiver of the right to trade mark application or its disposal or transfer.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Trade mark law, case II GSK 248/06“.

Categories: Art. 162 IPL | Art. 168 IPL | Art. 325 IPL | case law | Polish Act on Authors Rights and Neighbouring Rights | trade mark co-ownership | trade mark register | trademark law | Voivodeship Administrative Court.