The Voivodeship Administrative Court in Warsaw in its judgment of 30 April 2008 case file VI SA/Wa 262/08, published in LEX under the no. 512901, held that the interests of all market participants must also taken into account when examining the registrability of a trade mark. The grant of the right of protection for a trade mark cannot lead for the monopolization by one entrepreneur of signs that are in the public domain. This case concerned the examination proceedings of the word trade mark polbar Z-278236 that was applied for by Akademia Rolnicza from Lublin. The word “polbar” is used as the name of the hens’ breed.
Archive for: trade mark examination
Trade mark law, case VI SA/Wa 262/08
June 17th, 2008, Tomasz RychlickiTrade mark law, case VI SA/Wa 845/05
June 9th, 2008, Tomasz RychlickiValentino filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection for Valentino R-137628 trade mark that was registered in classes 35 39 for Orzechowski Wiesław Firma ASTRO from Gdynia. Valentino argued that Astro infringed on the principles of social coexistence, as it sought to use the reputation of the trademarks and trade names owned by Valentino. Granting the right of protection, thus placing on the same field of economic activity a very similar trade mark would threaten the interests of Valentino, and it would be also contrary to the institution of a trade mark.
The PPO dismissed the opposition and ruled that Valentino did not prove the reputation of its trade marks and due to the different classes there is no risk of consumers confusion, however the goods and services are complementary. The PPO noted also that the questioned trade mark differs from these owned by Valentino because elements such as V, Val, or Zone are exposed which makes them the dominant elements in these trade marsk, and they attract the attention of the public, turning their attention from the less visible Valentino word. Valentino filed a complaint against this decision.
The Voivodeship Administrative Court in its judgment of 8 November 2005 case file VI SA/Wa 845/05 overturned the decision and held it unenforceable. The VAC ruled that the most visible element in all trade marks in this case is the word Valentino, and verbal elements have the dominant position. The Court also noted that reputation of a trade mark is not dependent on the borders of individual countries or regions. The PPO should examine the evidence submitted by Valentino and it should assess the impact of the existence of a foreign reputed trade mark for its operation in Poland because Valentino could be uninterested of its expansion into the Polish territory, and in the situation if it were interested it could be overtaken by unauthorized entry. The Court agreed also that there was an infringement of the company name.
Trae mark law, case II GSK 380/07
March 5th, 2008, Tomasz RychlickiThe Polish Patent Office refused to recognize the right of protection for CHECK-UP IR-0595827 registered under the Madrid Agreement Concerning the International Registration of Marks for Zabaione GmbH and used to designate the goods in class 25, such as clothing for men, women and children and bars for clothes. The PPO ruled that the questioned sign is similar to CHECK-IN IR-0552746 trade mark registered with an earlier priority from 19 June 2002, for Hohe-Modelle Maria Hohe GmbH & Co., intended for marking of the goods in Class 25 such as outerwear for ladies and children.
The PPO ruled that to fulfill the provisions of Article 132(2)(ii) of the IPL, it is necessary to accumulate of the several factors: the signs must be similar to each other, the goods for which trade marks are meant should be homogenous, and as the consequence of the similarity of the signs and the goods, there is a risk of confusion as to the origin of the goods covered by those trade marks.
The Voivodeship Administrative Court in Warsaw in its judgment of 23 April 2007, casefile VI SA / Wa 145/07 dismissed the complaint filed by legal predecessor of Zabaione GmbH. In the opinion of the VAC, the Polish Patent Office correctly refused to recognize the right of protection for a trademark CHECK-UP, pointing to its similarity to CHECK-IN trade mark and the similarity of the goods in class 25, and acknowleded that it may lead to the risk of misleading the public. According to the Court, the PPO correctly assessed the similarity of signs, and rightly pointed out that the trade marks are similar to each other both visually and phonetically because of the first parts of the two signs. Both trade marks are composed of two elements, and have the same first part, “CHECK” and accordingly the suffix “UP” in the applicant’s character and the suffix “IN” in the opposed sign interconnected by a hyphen. According to the Court, the signs are also similar in the aural aspect – they are pronounced very similarly. Different suffixes are not sufficient to prove diversity of both signs. These are components are of secondary importance. The court shared the view of the PPO that the recipient pays more attention to the first elements of signs, and less to the endings, because visually the first letters and syllables attract the most attention and are better remembered. The average customer usually does not examine in detail all the elements of the trade mark, but it perceives a given sign as a general impression.
The VAC agreed with the applicant that the two signs have completely different meaning in English, however, the similarity of signs shall be always from the perspective of the average consumer. The knowledge of English in Polish society is not yet sufficiently widespread. For a person who does not speak English language these signs are fanciful.
The Court shared the opinion of the PPO that both signs are intended to designate similar goods in class 25 and the goods are complementary. According to the Court, a customer who knows goods under the brand CHECK-IN, may think the same company introduces a new range of clothing for men, women and children, branded with CHECK-UP trade mark. The Court emphasized the fact that Article 132(2)(ii) of the IPL uses the term “identical or similar goods”, i.e. the similarity of the goods is not identical as their identity. Similarity occurs in the case of goods of the same kind of similar purpose and conditions of sales. Clothes, for which both trade marks are deisgnated are undoubtedly similar goods regardless of their differences in assortment. The average customer can therefore assume that they are produced by the same manufacturer. An outerwear manufacturer of high quality and original clothes designed for specific audiences, could in fact release a new line of clothing of average standard intended for a wider audience, marking it with CHECK-UP trade mark.
Referring to the applicant’s argument that the two signs benefit from protection in Switzerland and Germany, the Court emphasized that protection of trademarks in each country and the guarantee that effective protection is not absolute. The registration under the Madrid Agreement does not mean that a trade mark is protected automatically in each Member State. The applicant is seeking trademark protection on the Polish territory, so Polish law is applicable to the assessment of the trade mark registrability. The Company decided to file a cassation complaint.
The Supreme Administrative Court in its judgment of 28 February 2008, case file II GSK 380/07 dismissed the cassation. The SAC noted that the Company has not provided any arguments concerning the erroneous interpretation of Article 132(2)(ii) of the IPL. It did not indicated whether there was the breach of any regulations on administrative proceedings. If there is no infringement of the proceedings, it can not be argued that there is a breach of substantive law, in this case, Article 132(2)(ii), just because the plaintiff thinks the facts are different. The SAC ruled that if the cassation complaint is based on allegation of improper application of a given provision of substantive law, the arguments included in such a complaint should explain why the accepted legal basis for settlement of the contested provision has no relation to the facts established, and what other provision the court should apply.
Trade mark law, case VI SA/Wa 1470/07
October 30th, 2007, Tomasz RychlickiThis case concerned the invalidation proceedings of MURBET R-155245 trade mark owned by Przedsiębiorstwo Wielobranżowe MURBET Andrzej Zaborski. The proceedings were initiated by the MURBET Gabrylewicz Spółka Jawna company from Ełk.
The Voivodeship Administrative Court in its judgment of 17 October 2007 case file VI SA/Wa 1470/07 held that the registration of a trade mark which infringes personal or property rights of third parties is unacceptable, and in light of case-law, in case of conflict between the company name (the firm), and a trade mark that registered with the “worse priority”, the priority shall be given to the earlier right. However, the exclusive rights to the company name (the firm) is not absolute. Its limits are set by the territorial and substantive coverage, the actual activity of person using the names. Only within these limits there may be a collision between identical or similar company name (the firm) and trademark.
The VAC held that because of the distinct areas of the business activity of the person entitled to the company name and the holder of the right of protection to MURBET R-155245 trade mark, there is no risk of leading their consumers to confusion as to the identity of such business or the owner of the later trade mark. The owner of the questioned trade mark does not use the reputation associated with the earlier (identical or similar ) company name (the firm), then it is difficult to find the collision of these two rights, and consequently a breach of an earlier right to the company name by the registration of the later trade mark. The judgment is not final. See also “Trade mark law, case II GSK 400/08“.
Trade mark law, case II GSK 269/06
October 6th, 2007, Tomasz RychlickiBy decision of 11 August 2005, the Patent Office refused to grant a right of protection for word-figurative “R-Profit” Z-234207 trade mark applied for by Raiffeisen Bank Polska S.A. for goods in Class 36 such as banking services for small and medium enterprises. The Patent Office concluded after examination proceedings that this sign may not be registered because it is similar to PROFIT R-87400 trade mark, registered for Bank Polska Kasa Opieki SA, with priority of 3 November 1993 for goods in Class 36 such as management of interest bearing money investments in zlotys. The PPO also stated that, in this case, the issue of services could not be challenged, since both signs are designed for the same services to a wide audience, i.e. banking services. The PPO ruled that both signs cannot exist simultaneously in trade without the risk of consumers confusions. In the opinion of the PPO there was no doubt that the trade marks are also similar phonetically and semantically.
The Voivodeship Administrative Court in Warsaw in its judgment of 11 May 2006 case file VI SA/Wa 542/06 dismissed the complaint filed by Raiffeisen Bank Polska S.A. and noted at the beggining that Article 315(1)(3) of the IPL, expresses the principle that the issue of the registrability of signs that were registered or applied for registration before 22 August 2001, is assessed on the basis of existing regulations. therefore the provisions of the Act of 31 January 1985 on trade marks are the basis for assessing the registrability of R-Profit trade mark, because it was applied for registration on 10 April 2001.
Article 315
1. Rights conferred in respect of inventions, utility models, ornamental designs, topographies of integrated circuits, trademarks and rationalisation projects, existing at the time of entry into force of this Law, shall remain effective. To these rights the previous provisions are applicable, unless the provisions of this Part stipulate otherwise.2. Legal relationships established prior to the entry into force of this Law shall continue to be governed by the previous provisions.
3. Statutory requirements for the grant of a patent, a right of protection or a right in registration shall be assessed under the provisions effective at a date of filing of an application concerning an invention, a utility model, a trademark or topography of an integrated circuit with the Patent Office. However, the provision of Article 37(2) shall apply to patent and utility model applications pending at the date of entry into force of this Law.
In the opinion of the VAC that this case involved the same type of services. The Court agreed with the analysis of the list of services performed by the PPO that there exists homogeneity of services between in both lists of goods. In the opinion of the Court, the PPO has properly analyzed the similarity of “R-Profit” and opposing “Profit” signs. Both signs should be compared in aural conceptual and phonetic aspects, bearing in mind that “R-Profit” is a word-figurative trade mark. According to the VAC, even though this case concenrs word and word-figurative trade marks, one may say that there exists graphic similarity, as “R-Profit” and “Profit” differ only by the letter “R” and the core of the two characters – “Profit” is identical. The VAC ruled that the argument that services in question have different distribution channels does not preclude the likelihood of confusion, because an average consumer may think that the service is derived from an entity that combines the organizational relationship and legal rights with the owner of “Profit” trade mark.
Raiffeisen Bank Polska S.A. filed a cassation complaint. The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 269/06 dissmised the case. The SAC held that the comparison of signs should be based on the general, overall impression, which compared trade marks have on the recipient, and thus if the dominant element in both signs are their common elements, there is a similarity between trade marks that is posing a risk of consumers confusion.
Trade mark law, case II GSK 296/06
September 30th, 2007, Tomasz RychlickiBy its decision of 15 July 2003, the Polish Patent Office has granted a right of protection for FEMISTEN R-146192 trade mark for goods in Class 5 such as pharmaceuticals, pharmaceutical preparations. On 28 July 2004, the Patent Office received a notice of opposition, filed by Solvay Pharmaceuticals B.V. from Netherlands, and it based its oppsition on FEMOSTON IR-624469 trade mark also registered for goods in Class 5. The Dutch company argued that the FEMISTEN is confusingly similar to FEMOSTON both in the phonetic, and aural aspects, and both signs are meant to designate the same kind of goods. The owner of the registration requested the PPO to dismiss the case.
The PPO in its decision of 16 November 2005 dismissed the application for the invalidation of the right of protection for FEMISTEN trade mark. In support of the decision the PPO stated that in its opinion there is no similarity of the signs and it likely will not mislead consumers as to the origin of goods. Both signs were considered as a whole as fanciful. The component FEMI in FEMISTEN trade mark indicates that the product is designed for women. There was some similarity in structure and wording of these signs (the two characters have the same number of letters and syllables, and the difference comes down to differences of vowels in these assays), but in the assertion of the PPO it would not mislead the recipients as to the origin of the goods from a particular entrepreneur. FEMOSTON is a trade mark meant for designation of pharmaceutical preparations used in hormone therapy, which are bought only on prescription, so these goods are available to the customer through doctors and pharmacists. Products bearing FEMISTEN are the skin-care goods, available without a prescription and not associated with hormone therapy. The buyers of pharmaceutical products are adults, which, thoughtfully make their choice by paying attention.
Solvay filed a complaint. The Voivodeship Administrative Court in Warsaw in its judgment of 25 May 2006, case file VI SA/Wa 537/06 dissmied the complaint and ruled that the collected evidence made it clear, that the proprietor of FEMISTEN trade mark at the moment of filing a request for invalidation did not market the goods covered by the disputed mark, but according to the declaration of the holder, Glaxo intended to bring to the market skin care preparations in the form of ointments and gels available without prescription. The Court considered the findings of the Patent Office in this regard as correct. The legal doctrine and the case law established already the method of examining of the homogenity of goods. It should be assessed according to the type of the goods, purpose of the goods and the conditions of their sale, and the mere fact of belonging to a common class of goods is not a decisive argument for the recognition of the goods as belonging to the same kind. The Court ageed with the comparison of these signs that was made by the PPO and noted that the similarity of signs, as referred to in Article 9(1), point 1 of the TMA, is not an independent category, but it serves a purpose, namely the elimination by refusing to register the mark, which would under normal conditions of economic activity to deceive consumers as to the origin of goods. Evaluation of the similarity of the marks must be made at the same time from the perspective of the average consumer of the goods.
Solvay Pharmaceuticals B.V. Decided to file a cassation complaint. The Supreme Administrative Court i its judgment of 13 March 2007, case file II GSK 295/06 ruled that the issue of similarity of trade marks has both the factual and legal aspects, and that the administrative court can conduct its own assessment of the similarity criteria used by the Polish Patent Office. See “Trade mark law, case file II GSK 36/05“.
The SAC noted that according to settled case-law, the similarity of trade marks are resolved on the basis of risk of confusion as to the origin of goods. And the risk of confusion as to the origin of goods consists of similarity of goods and similarity of signs. See “Trade mark law, case file II SA 2778/01“.
Therefore, an essential element of the facts established for purposes of comparison of trade marks in terms of their similarity is to determine what goods bear these marks. Such a requirement does not occur when the same signs lack of similarities that may lead to a risk of confusion as to the origin of goods. This situation occurs in particular when the word trade marks compared in the visual and aural aspect show significant differences, so that mistakes are impossible for the consumer regardless of the way of purchasing terms and conditions of sale. The SAC noted that for unexplained reasons, it was adopted as the basis for comparisons of goods, by how they will be used, based only on arguments provided by Glaxo, where it was not disputed that when the decision was contested before the VAC, no commodity was marked with the questioned sign. It was also important to consider whether the observed similarity in the spelling of the two signs may lead to the risk of confusion. For these reasons, the SAC reversed the contested judgment and referred the case to the VAC for further re-examination.
Trade mark law, case DT-9/06
September 20th, 2007, Tomasz RychlickiThe Polish Patent Office in its decision of 17 August 2006, case file DT-9/06 has rejected a request to register a motion trade mark (the application was filled as the international registration IR-776498).
The examiner found that such sign (described as: movement mark: the colours in the waves are changing continuously from red to green upwards from bottom left to top right in an 8-second time span) can not be shown in graphic form with the use of images, lines, symbols in the manner that such presentation is at the same time clear, precise, compact, easily accessible, comprehensible, durable objective and uniform, which in consequence is devoid of distinctive character.
Trade mark law, case VI SA/Wa 227/07
September 15th, 2007, Tomasz RychlickiThe Voivodeship Administrative Court in Warsaw in its judgment of 13 April 2007 case file VI SA/Wa 227/07 interpreted the provisions of Article 129(2)(ii) 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.
2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods.
The Court ruled that Article 129(2)(ii) of the IPL, refers to purely descriptive signs, i.e., characters that the direct and sole function is to provide information about the goods and not on its origin. The distinctiveness of the mark is the fact that the sole and direct information is information which indicates the characteristic of the goods. These signs that may constitute a determination of such characteristics only in a way of indirect conclusion, do not have the descriptive nature. The promotional message of the sign never itself makes it non distinctive, as well as the unoriginal slogan does not decide by itself about the lack of its distinctiveness. This case concerned the registration proceedings of word trade mark “ZAKUPY U NAS WEJDĄ CI W KREW” R-219731 (in English: Shopping with us you will come in the blood) owned by Polish company RAMPEX K. Termin T. Termin Spółka Jawna from Tychy.
Trade mark law, case II GSK 247/06
August 11th, 2007, Tomasz RychlickiThis is the continuation of a story described in “Trade mark law, case VI SA/Wa 1705/05“. The Supreme Administrative Court in its judgment of 20 February 2007, case file II GSK 247/06, dismissed a cassation complaint brought by the K. Company. This judgment concerned TERRAVITA trade mark R-142204.
The Court ruled that it cannot be assumed that in case of word-graphic signs, a word element of such sign has a decisive character because it is easy to remember and to communicate. While assessing the similarity of signs one has to take into the consideration a general impression which compared signs exert on the consumer. I’m still not so certain if this trade mark (trapezoid box/packaging for a bar of chocolate with characteristic rectangle “window” at the front which allows the consumer to see the texture of the chocolate) should be perceived as “trade dress” as it was discussed by the SCOTUS in its judgment in the case Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). Maybe it is a three-dimensional sign/trade mark (3D).
Trade mark law, case II GSK 265/06
May 7th, 2007, Tomasz RychlickiOn 1 December 2003, Telekomunikacja Polska S.A, filed an opposition against the decision of the Patent Office of 26 March 2003 granting the right of protection for word-figurative trade mark Teleaudio R-143563 for Teleaudio Sp. z o.o. for services in classes 38 and 41 such as line and/or phone numbers renatal, audio-text services, organization of entertainment and education competitions.
TP S.A. stated that it is the owner of AUDIOTELE R-101622 trade mark and word-figurative trade mark AUDIO TELE R-101623, registered with the earlier priority, which are used in trade from 19 March 1995 for audio-text services. TP S.A. argued that it was the first company that lanched on 19 March 1995, a national audio-text system under the “audiotele” brand name. TP S.A. argued also that TELEAUDIO Sp. z o.o. entered the market of audio-text services almost a year later, and deliberately chose imitating sign for its firm (company name) and the trade mark, and copied the graphic which depicts a phone. According to TP S.A. such actions violated its property rights and might mislead the public as to the origin of services.
The PPO ruled that the differences between the trade marks were not sufficient to eliminate the similarity between the compared signs. The essential elements of those marks – the words AUDIOTELE and TELEAUDIO were confusingly similar. According to the PPO the figurative elements of marks perform only a supporting role, as they will be perceived by the public as a decoration, not as the most significant elements that identify the source of the services. The PPO has indicated that the average customer will focus on the words AUDIOTELE and TELEAUDIO because in assessing the similarity of characters as a whole, the dominant and convergent elements of the sign are of crucial importance.
Teleaudio Sp. z o.o. decided to file a complaint. The Voivodeship Administrative court in Warsaw in its judgment of 25 April 2006 case file VI SA/Wa 2082/05 dissmissed the case. In the opinion of the VAC, the PPO has properly analyzed the similarity of TELAUDIO R-143563 trade mark and opposing AUDIOTELE sign. Both signs had to be compared, given the verbal, aural and semantic similarity. The VAC held that the case in question concerns the similarity of signs in verbal, aural and semantic aspects. The Court considered these factors as affecting the risk of confusion. The VAC noted that the PPO has analyzed the sign as a whole, and rightly presented the idea about the possible characteristics that may affect the ability to distinguish one trade mark from another. Teleaudio Sp. z o.o. filed a cassation complaint.
The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 265/06 dismissed the case. The SAC ruled the VAC accurately assessed the similarity of signs as an integral whole. The SAC noted also that the case-law of the Supreme Court established the rule that the legal assessment on the basis of Article 7 and Article 9(1)(i) and (ii) of the TMA with regard to word-figurative trade mark should be based on an integral whole of a trade mark, and not only one of the words, which is only one of its components (see the judgement of the Supreme Court of 11 March 1999, case file III RN 136/98, published in OSN, 2000/1/2).
The Court ruled also that the issue of similarity of trade marks is both the factual and legal category. See also “Trade mark law, case II GSK 36/05“. The Court ruled that the VAC rightly pointed out that the similarity of signs is examined and assessed based on common elements of marks, not by the differences. Thus, the differences do not preclude the similarity of the signs. The examination of the similarity should thus lead to the objective similarities and differences, and their sum should be related to the average attention of a reasonable consumer (see U. Promińska, Naruszenia praw na dobrach niematerialnych, PIRzP, 2001, p. 95 and literature cited therein).
Trade mark law, case VI SA/Wa 1420/06
November 11th, 2006, Tomasz RychlickiThe Voivodeship Administrative Court in Warsaw in its judgment of 31 October 2006, case file VI SA/Wa 1420/06 held that while examining whether the rights of protection may be granted, it should be determined whether a sign could serve as a trademark at all. Only after it was decided that a sign could be a trademark, one should examine whether a mark is sufficiently distinctive and therefore to check whether the sign is suitable for distinguishing the specific goods in trade, to designate of which it has been applied for. The lack of distinctive character of a trade mark is considered as the absolute grounds for refusal to trade mark registration, but a sign may acquire distinctive character as a result of use.
The Court found it difficult to say that red color combined with different kinds of equipment and tools, or accessories used in construction is something extraordinary, unique and unprecedented, which could stick decisively in the memory and let the consumer individualize the goods in the market among the goods of the same type but originating from different companies. This judgment concerned separate Color RED Pantone C32, IR-803195.
Trade mark law, case II GSK 377/05
October 6th, 2006, Tomasz RychlickiThe Polish Patent Office invalidated the right of protection for word-figurative trade mark OCETIX R-135047 based on provisions of Article 8(2) 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 later amendments. The request was filed by the competitior of Szczęsna Ewa DELTA L.T.D, who claimed its prior rights to the company name (firm).
Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;
Ewa Szczęsna filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 20 July 2005, case file VI SA/Wa 67/05 dissmissed the case. The VAC agreed with the PPO that the registration of the word-figurative trade mark OCETIX constituted the infringement of the firm of the competitor of Ewa Szczęsna, who established its undertaking in 1991. The Court ruled that the dominant element is the word OCETIX, it attracts the attention and has the distinctive character, while other elements are informative and are indicating the scope of the activities of Szczęsna Ewa DELTA L.T.D.
The Supreme Administrative Court in its judgment of 5 April 2006, case file II GSK 377/05 upheld the contested judgment and ruled that in accordance with Article 164 of the IPL, the right of protection for a trade mark may be invalidated at the request of any person who has legitimate interest. Article 315(3) of the IPL provides the principle according to which the registrability of signs registered or applied for the registration before 22 August 2001, is assessed on the basis of existing regulations. Thus, the law underlying the assessment of trade mark protection for OCETIX that was applied for the registration on 14 October 1998 are the provisions of the TMA.
The SAC repeated that the right of protection for a trade mark is deemed as an exclusive, absolute, transferable and heritable property right. It’s a sign intended to distinguish the goods of one undertaking from those of the same type from another entrepreneur. A trade mark performs a distinctive, warranty and advertising functions. The Court noted also that in the course of trade, the category of distinctive signs, in addition to trade marks, are also brands/signs that are distinguishing of companies. The firm is one of such signs. It is the name under a which the registered merchant (general partnership, limited partnership, limited liability company, joint stock company) operates its undertaking. The firm of an undertaking distinguishes a given undertaking from other undertakings, in the same and/or other object/way of business. See R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 13 and 17.
The Court also ruled that the Paris Convention of 20 March 1883 on the Protection of Industrial Property published in Journal of Laws (Dziennik Ustaw) of 1975, No. 9, item. 51 and 52), introduced to the Polish law the term of the trade name, which previously was not used in the Polish legislation. The term collectively covers all the markings of companies enjoyed by the persons mentioned in Articles 2 and 3 of the Convention. The SAC agreed that Article 8 of the Convention does not constitute an independent basis to protect the trade name of the entrepreneur, because it does not specify conditions for such protection and does not indicate what claims should be used in the case of infringement of the rights to the company name. However, this affect the domestic law. See also “Trade mark law, case II SA 2914/01“. The Court ruled that the firm is protected under the Article 37 Code of Commerce (it was repealed by the Code of Commercial Companies later on) and Article 43 of the Civil Code. According to Article 37 of the Code of Commerce, the protection of the firm arises upon its entry into the commercial register, and will expire on the date a court order to withdraw its registration from the register comes into force. The infringement of the firm occurs if there is unlawful use by unauthorized person of a sign which does not distinguish definitively from the firm in a given locality (Article 37 in connection with Article. 35 of the Code of Commerce). Pursuant to Article 43 of the Civil Code, the firm is subject to the protection provided for personal rights/interests (Articles 23 and 24 kc). This protection arises from the date of the first use of a firm in business.
Trade mark law, case II GSK 167/06
March 11th, 2006, Tomasz RychlickiThe Voivodeship Administrative Court in its judgment of 24 February 2006 case file VI SA/Wa 1946/05 held that the term mentioned in article 31 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 later amendments, is a term of substantive law and shall not be shortened or extended.
Article 31
The request for annulment of a right deriving from registration of a trademark may be filed within five years of the date of registration. After the expiry of that period, such request may only be filed in respect of an owner who has obtained registration in bad faith.
The VAC also ruled that bad faith mentioned in article 31 of the TMA, cannot be treated extensively in relation to all grounds for invalidation of the registration, because this would undermine the sense of the institutions of mutability of the registration. The Supreme Administrative Court in its judgment of 5 December 2006 case file II GSK 167/06 dismissed the cassation complaint. This case concerned DELIC-POL R-81280 trade mark.
Trade mark law, case VI SA/Wa 1705/05
March 11th, 2006, Tomasz RychlickiThe Voivodeship Administrative Court in Warsaw in its judgment of 2 March 2006, case file VI SA/Wa 1705/05 decided on trade dress and 3D trade mark TERRAVITA R-142204. The Court ruled according to Article 30 of the Act on 31 January 1985 on Trade marks (Journal of Laws No 5, item 17 with later amendments), a legal interest to demand the invalidation of a trademark registration is afforded to an entity which derives such right from a competence to fill for trademark registration, use of a trademark or to demand the invalidation of a trademark registration for the sake of the collision with its own rights.
There is a presumption of good faith and bad faith has to be proven. There is an assumption that someone is acting in bad faith if he or she has the awareness of discrepancy of the situation with the law or as a result of his or her negligence in knowledge about the legal situation. In accordance with the well established doctrine, practice and case law, a trade mark according to article 7 and article 9(1) pt 1 and 2 of the TMA, should be examined as a whole. It is not allowed to test only one element of the complex sign, for instance the graphic, without taking into the consideration of the word elements of the sign, or doing it insufficient way. Therefore, if the Polish Patent Office examines individual elements of a sign, it should in next, to put them together and to draw the final conclusions. See also “Trade mark law, case II GSK 247/06“.
Trade mark law, case II GSK 65/05
October 17th, 2005, Tomasz RychlickiThe Supreme Administrative Court in its judgment of 8 June 2005 case file II GSK 65/05, held that it is accepted in the case law that the sufficient distinctiveness of a trade mark should be examined in concreto and not in abstracto. This means also that the sign must relate to the specific goods listed in the application form. The Court ruled that informational and descriptive character of the sign is a characteristic that demonstrates the lack of concrete, not the abstract distinctive character of a sign. This case concerned the examination proceedings of “supermarket” Z-197930 applied for by AGORA S.A.
Trade mark law, VI SA/Wa 1482/04
August 11th, 2005, Tomasz RychlickiThe Voivodeship Administrative Court in Warsaw in its judgment of 3 August 2005, case file VI SA/Wa 1482/04 held that a single colour is not able by its nature to independently distinguish goods of individual entrepreneurs. But, even if a single colour is devoid of any distinctive character according to article 3(1)(b) of the First Directive, it may acquire such a distinctive character in relation to goods by use of such coulour. This factor should be considered when assessing the registerability of a single coulour as a trademark.
This judgment concerned separate Color RED Pantone 485 C applied for by Firma Cukiernicza SOLIDARNOŚĆ – rok założenia 1952 Spółka z o. o. from Lublin for goods in class 30 such as confectionery, chocolate confectionery, sweets.
Trade mark law, case II GSK 49/05
June 29th, 2005, Tomasz RychlickiThe Polish Patent Office in its decision of 10 April 2003 No Sp. 218/01 refused to invalidate the registration of AMBER R-98839 trade mark registered for goods in Class 3 such as bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices and owned by Evyap Sabun,Yag,Gliserin Sanayi Ve Ticaret A.S. from Istambul, Turkey. The request for invalidation was filed by IZIS Kosmetyczno-Lekarska Spółdzielnia Pracy from Warsaw and IZIS decided also to file a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 14 October 2004 case file 6 II SA 3571/03 annulled the questioned decision and ruled that it was made in a breach with procedural law. Evyap Sabun,Yag,Gliserin Sanayi Ve Ticaret A.S. filed a cassation complaint.
The Supreme Administrative Court in its judgment of 11 May 2005 case file II GSK 49/05 ruled that there is no doubt that it’s necessary to refer to the inadmissibility of registration of a trade mark as provided Article 8(1) of the TMA with regard to the content of the trade mark itself. Initially, in legal doctrine and then in case-law, started to develop trends to classify to this provision also with the actions/behavior of a person who applied to register the trade mark, that were characterized by the contradiction with the principles of social coexistence, later replaced with the legislation naming such as “complying with the principles of good manners”, fair trading and good faith , so these are subjective elements. There were not, however, views, or judgments, combining this rule with the conduct of the administrative proceedings, because such understanding is simply unacceptable. The SAC repealed the questioned judgment.
Trade mark law, case GSK 864/04
April 11th, 2005, Tomasz RychlickiThe Supreme Administrative Court in its judgment of 23 November 2004 case file GSK 864/04 held that according to Article 4(1) and Article 7(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, an undefined trademark, i.e. a trade mark which is not represented in one form, does not possess any sufficient ability to distinguish goods. This judgment concerned a trade mark that was filled according to the Madrid system of international registration of marks.
The trade mark IR-667827 owned by FERRERO S.p.A. is represented in the double color composition (the lower part is in white and the top part is in orange). The Court ruled that there was no justification for the argument that the composition or combination of colors, that could serve as a trade mark, has to meet other and additional requirements, such as novelty and originality of form or compositions of colors, i.e. it has to be a manifestation of creativity. However, an undefined sign, that does not exist in one and the same form, is not able to create and capture the consumer associations as to the origin of goods from one and the same entrepreneur. So, such a sign is not sufficiently distinctive. A simple composition of two or more colors, without shape or contour, or the combination of these colors in every possible configuration, does not meet the accuracy and uniformity that is required to perform the function of the trade mark in order to be registered. Such inaccurate representation of the sign which is the combination of colors presented in an abstract (no contours) may lead to many different variations, which in turn, will not allow the consumer to perceive and remember this sign, and thus re-purchase the goods originating from the same company.
Trade mark law, case II SA 2778/01
February 28th, 2005, Tomasz RychlickiThe Supreme Administrative Court in its judgement of 28 March 2002, case file II SA 2778/01 held that according to the settled case-law, all the issues with regard to the similarity of trade marks are resolved on the basis of the risk of confusion as to the origin of goods. And the risk of confusion as to the origin of goods consists of similarity of goods and similarity of signs. The Court ruled that the trade marks are compared and examined globally, with particular emphasis on its dominant and distinctive elements. This case concerned “Królewska Para” R-115243 trade mark.
Trade mark law, case II GSK 36/05
January 30th, 2005, Tomasz RychlickiThe Supreme Administrative Court in its judgment of 11 May 2005, case file II GSK 36/05, published in the electronic database LEX under the number 166070, ruled that the issue of similarity of trade marks is both the factual and legal category. Such a specific legal status is a prerequisite to justify an overall reference to the alleged breaches of procedural and substantive law, which are related to this issue and the administrative court can conduct its own assessment of the similarity criteria used by the Polish Patent Office.
This case concerned the examination proceedings of the application for word-figurative trade mark 222 PANORAMICZNE Z-175554 filed by Oficyna Wydawnicza PRESS-MEDIA from Mielec.