Archive for: trade mark invalidation

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Trade mark law, case II GSK 2803/14

March 20th, 2015, Tomasz Rychlicki

The Polish Patent Office dismissed the request to invalidate the right of protection for the word trade mark PHYTOLYZIN R-195394. The request was filed by Dr. med. Matthias Rath, the owner of the earlier International trade mark registration LyCin IR-813677. The Voivodeship Administrative Court in its judgment of 15 November 2012 case file VI SA/Wa 790/12 dismissed a complaint filed against this decision, and the Supreme Administrative Court in its judgment of 3 July 2014 case file II GSK 492/13 dismissed a cassation complaint filed by Dr. med. Matthias Rath.

On November 2014, Mr Rath filed before the Supreme Administrative Court a request for the annulment of previous proceedings, and a motion to reopen the proceedings and to issue an award of costs in accordance with prescribed procedure and also submitted as a supplement to the cassation complaint the decision of the Office for Harmonisation in the Internal Market of March 2013 on invalidity of the trade mark PHYTOLIZIN along with its certified translation into Polish. Mr Rath argued that the proceeding should be deemed by the Court as invalid because as the representative of the trademark owner appeared an attorney who submitted at the hearing a substitution of PoA as signed of July 2014. However, the power of attorney was invalid, because it was issued on behalf of another company, which was not a party to the proceedings.

The Supreme Administrative Court in its judgment of 9 January 2015 case file II GSK 2803/14 rejected the request and held that such motion is allowed if a party does not have the capacity and standing to bring proceedings or was not properly represented or if as a result of violations of the law was deprived of possible actions. However, the reopening cannot be requested if, before the judgment becomes final the inability to act ceased, the lack of proper representation was raised by way of objection, or a party has confirmed all procedural actions. These pleas and arguments for reopening, however, did not apply to Mr Rath. The argument for reopening of the proceedings was based on lack of adequate representation refered to the representation of the trade mark owner, not Mr Rath, and such a request may only be raised by a party that was not properly represented.

Categories: Polish Act on Proceedings Before Administrative Courts | Polish courts | Polish institutions | Polish law | Polish Patent Office | Polish Supreme Administrative Court | similarity of signs | trade mark invalidation | trademark law | Voivodeship Administrative Court.

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 1885/12

June 10th, 2014, Tomasz Rychlicki

Polskie Towarzystwo Tatrzańskie (Polish Tatra Society) requested the Polish Patent Office to invalidate the right of protection for the the word-figurative trade mark POL.TOW.TATRZAŃSKIE 1873 R-101381 owned by Zarząd Główny Polskiego Towarzystwa Turystyczno-Krajoznawczego (Polish Tourist and Sightseeing Society). PTT argued that in 1994, the PTTK unlawfully applied for the trade mark in question. It was plagiarized traditional organizational badge of the PTT and at the same time a membership badge and a badge of honor of that Society. This organizational badge with the inscription “Pol. Tow. Tatra of 1873” and the image of chamois, was established in 1922. After the II World War, the Society ceased to function, but it has been reactivated in 1981 in times of Polish People’s Republic. The badge was re-established by the decision of the Chairman of the Committee on Youth and Sports of October 1990 issued according to the provisions of the Polish Act of 21 December 1978 on badges and uniforms, as a PTT’s badge. PTTK argued that the decision was challenged before the administrative bodies and courts.

R-101381

The PPO adjourned the proceedings until the Supreme Administrative Court in its final judgment of 2008 dismissed the cassation complaint against the decision of the Minister of Economy that refused to annull the decision of the Chairman of the Committee for Youth and Physical Culture of October 1990. The PPO invalidated the right of protection. PTTK filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 5 July 2012 case file VI SA/Wa 515/12 annulled the contested decision, and ruled it unenforceable. The Court held that the legal basis for invalidation of the trade mark were the provisions of the Article 8 point 5 of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments. Under this regulation, the registration of a sign which contains the name or crest of the Polish voivodeship, city or town, a reproduction of a Polish order, badge of honor and a military badge or sign, is unacceptable. Where justified, such a sign may be registered following approval by the competent authority state or the relevant organizational unit. In the filing date for registration of the invalidated trade mark, the Polish Act of 21 December 1978 on badges and uniforms was in force. Article 2 of that Act established three types of badges: a badge of honor, an organizational badge and an occasional badge. There was no doubt for the Court that the PTT has established an organizational badge. Clearly, it was not a badge of honor, because the PTT has not preserved the procedures required for its establishment. In turn, Article 8 point 5 of the TMA introduces inadmissible registration of a sign containing a badge of honor, not organizational badges. The VAC ruled that the PPO has violated the substantive law while deciding this case. PTT filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 May 2014 case file II GSK 1885/12 dismissed it.

Categories: Art. 29 TMA | Art. 30 TMA | Art. 8(1) TMA | Polish Act on Trade marks | Polish courts | Polish institutions | Polish law | Polish Patent Office | Polish Supreme Administrative Court | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 2005/12

April 8th, 2014, Tomasz Rychlicki

The Polish Patent Office dismissed the opposition filed by E.I. du Pont de Nemours & Company against the decision on the grant of the right of protection for the word trade mark TEFAPAK R-199130 that was applied for the Polish company SINOGRAF S.A.

E.I. du Pont argued that the sign TEFAPAK is similar to its trade mark TEFLON R-49573 that was registered in Poland in 1968, and to its CTM TEFLON that was registered in 1996. According to the US company, the compared goods are identical or similar, and the signs share the same prefix TEF, which could lead to consumers’ confusion.

SINOGRAF S.A. requested the PPO to dismiss the opposition, and argued that the goods are directed to competent consumers of the proper level of technical knowledge, who have knowledge and experience in the field of materials, and thus much greater possibility of distinguishing different trade marks than the average recipient.

The PPO dismissed the opposition and found that the trade marks at issue are not similar, since they have significantly different overall impression both in the the visual and aural aspects. The PPO noted that there is no likelihood of confusion and it could not include the likelihood of association, because the goods are targeted to specialized recipients. E.I. du Pont filed a compliant against this decision.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 301/12 dismissed it. The Court held that the Polish Patent Office correctly established all circumstances of the case. The VAC agreed that the goods are identical or similar, however, the Court did not agree with the argument that the compared signs are similar to the extent that could lead to likelihood of confusion. In the opinion of the Court, the trade mark are not similar, so arguments about the use of someone else’s reputation and the reputation of the trade mark can not be justified. Dissimilar signs can not induce associations of customers, so there can be no conscious imitation and benefit from someone else’s reputation. E.I. du Pont filed a cassation complaint.

The Supreme Adminitrative Court in its judgment of 20 March 2014 case file II GSK 2005/12 dismissed it.

Categories: Art. 107 §3 APC | Art. 132(1)(ii) IPL | Art. 132(1)(iii) IPL | Art. 151 PBAC | Art. 246 IPL | Art. 7 APC | Art. 77 APC | Art. 8 APC | Art. 80 APC | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | Polish Administrative Proceedings Code | Polish courts | Polish institutions | Polish law | Polish Patent Office | Polish Supreme Administrative Court | similarity of goods | similarity of signs | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 1542/12

February 17th, 2014, Tomasz Rychlicki

On August 2008, The Polish Patent Office granted the right of protection for the word-figurative trade mark TEFLEX Q R-211213 for goods in Class 9 such as optical apparatus and instruments, spectacle frames, sunglasses, eyeglasses, articles for the manufacture of spectacles, spectacle cases, chains for spectacles, sports eyeglasses, optical lenses, optical glasses, optical products, and services in Class 44 such as optical services, medical assistance, medical clinics, for the Polish company Krasnodębski i S-ka OPTIBLOK Spółka Jawna.

R-211213

Eschenbach Optik GmbH filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. The German company argued that the trade mark TEFLEX Q is similar to its CTM t-flex no. 001821651 that was registered for goods in Class 9 such as spectacles and spectacle frames. Moreover, it pointed out that the questioned trade mark has been applied for registration in bad faith, and its registration and use may lead to the infringement of the applicant’s property rights and the unfounded use of the reputation of the t-flex designation. The fact that the registered sign is confusingly similar and resembles t-flex brand for the same narrow class of products was an argument for the bad faith. Such action indicated the intention to use consumers’ knowledge of products bearing t-flex sign. The brand t-flex is a fanciful designation and it was extremely unlikely for the OPTIBLOK to apply for registration of the sign that was very similar. It was merely a coincidence. The German company noted that it conducts its business in more than 80 countries, including Poland. From the beginning, the Company manufactured and sold of glasses and optical devices, and TITANflex technology is one of the most important of its products. The Polish company is a competitor on the local market. The registration and use of the trade mark TEFLEX Q infringes the Community trade mark t-flex and violates the property rights of Eschenbach Optik GmbH. The existence of similar signs can result in negative consequences for clients and lead them to confusion with regard to the origin of goods. The infringement of the reputation of the t-flex sign was based on its dilution. While referring to the similarity of the goods, the German company noted that the services of class 44 are complementary to the goods in Class 9.

CTM no. 001821651

The Polish company argued that it did not act in bad faith, because before filing the trade mark application, it used services of a patent and trade mark attorney and therefore acted negligently. At the time of registration there was no identical or similar signs to TEFLEX Q mark. Additionally, the brand t-flex does not have distinctive character, because there are tens of thousands of products with the same name in the world.

The Polish Patent Office invalidated the right of protection for the trade mark TEFLEX Q R- 211213 because, it found that the characters are very similar. However, PPO did not agree with the argument that the application was made ​in bad faith. According to settled case-law and legal commentators, the mere fact that one party applies for a trade mark similar to a sign used by the other party is not deemed as acting in bad faith. The bad faith must be proved based on other factors than knowledge of market presence of similar brands and signs, such factors include for instance dishonesty in relation to the interests of another entrepreneur. The reputation of the trade mark t-flex was also not proved. The mere statement that the German company had its Polish subsidiary was not sufficient to prove that Eschenbach Optik GmbH was present on the Polish market before the questioned trade mark was applied.

The Voivodeship Administrative Court in its judgment of 17 February 2012 case file VI SA/Wa 1885/11 dismissed it and ruled that the PPO referred precisely and in detail to all facts and evidence of the case. OPTIBLOK filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 January 2014 case file II GSK 1542/12 dismissed it.

Categories: 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 | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 1539/11

October 28th, 2013, Tomasz Rychlicki

On January 2007, the Polish Patent Office granted the right of protection for the word-figurative trade mark JAVART R-184566, applied for JAVART Spółka z o.o. form Warsaw, for goods in Class 1 services in Class 35 and 42.

R-184566

Oracle America, Inc., the owner of the trade marks JAVASCRIPT R-110075, JAVA COMPATIBILE R-112620, JAVA DEVELOPER CONFERENCE R-116591, 100% PURE JAVA R-125493, intended to designate goods such as computer software, electronic equipment and/or services related to these goods, filed an opposition. Oracle argued that opposed trade marks are similar and used to designate identical or similar goods and services, which may lead to consumer confusion. JAVART argued that the opposition should be dismissed. The PPO invalidated the right of protection for the word-figurative trade mark JAVART R-184566 and decided that JAVA trade marks are known by a significant part of computer users, including developers around the world, also in Poland, and as such enjoy a worldwide reputation for software.

R-125493

JAVART filed a complaint against this decision, but the Voivodeship Administrative Court in Warsaw in its judgment of 20 January 2011 case file VI SA/Wa 111/10 dismissed it. JAVART decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 23 November 2012 case file II GSK 1539/11 dismissed it. The Court held that the PPO correctly found that the applicant may gain unfair advantage through the use of the sign JAVART.

Categories: Art. 132(2)(iii) IPL | Art. 156 IPL | famous trade marks | Polish Act on Industrial Property Law | Polish courts | Polish institutions | Polish law | Polish Patent Office | Polish Supreme Administrative Court | reputed trade marks | trade mark depreciation | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 270/12

September 24th, 2013, Tomasz Rychlicki

The Polish company INTERKOBO sp. z o.o., the owner of word trade mark MYBABY R-148924 registered for goods in Class 28 such as games, toys, sporting goods, requested the Polish Patent Office to invalidate in part the right of protection for the word-figurative trade mark MY SWEET BABY R-187751 registered for goods in Classes 12, 20, 25 and 28, and owned by PEXIM Artur Kamiński. INTERKOBO claimed high recognition of the MYBABY reputed trade mark among buyers of children’s toys and a high degree of similarity between the goods. The company noted that since 15 years it is one of the largest importers of toys in Poland. PEXIM argued that its trade mark is registered in class 28 for goods such as children’s toys – dolls, doll beds, cradles for dolls, doll furniture, doll clothing. PEXIM operates since 15 June 2001, and its activity is the manufacture of wicker and wood, which are exported. Wickerworks are made for young children. These are strollers, cribs and miniatures of these products as toys for children. The products are bearing a trade mark and a company name, therefore, the risk of confusion is excluded.

R-187751

The Polish Patent Office invalidated the right of protection in part of goods in Class 28. The PPO ruled that both trade marks are used to designate similar goods. The dominant element in both signs is the word baby, because it is a base or core to the other words, and in particular, their meanings so it shows that the these trade marks have a similar range of meaning, therefore there is a high risk of association by the public between the marks, and the likelihood that the consumer may be confused as to the origin of goods. PEXIM filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 29 September 2011 case file VI SA/Wa 1407/11 dismissed it. The Court ruled that the PPO properly carried out the proceedings and correctly interpreted the law. According to the Court there was homogenity of goods in Class 28, and even the identity of the goods, because the Nice Classification was subject to change over the years, but the changes did not have any historically impact on the signs and the goods offered. The difference of one word that occured in the compared signs was so unimportant that it did not make them different enough to rule out the risk of confusion in the ordinary course of trade. PEXIM filed a cassation complaint, and additionally, a motion to stay the execution of the decision. The Company argued that the contested decision involves very high cost and its implementation would include a very serious consequences for its economic activity, and thus would cause irreparable consequences and expose the company to serious losses.

The Supreme Administrative Court in its order of 27 July 2013 case file II GSK 270/12 dismissed the motion. The SAC ruled that PEXIM, despite its obligation to submit such evidence, has not shown the existence of statutory grounds that would allow to stay the execution of the contested decision. According to the Court, PEXIM only claimed very serious and irreparable consequences and big losses. Meanwhile, while citing in support of the motion specified circumstances, the Company should be able to substantiate their occurrence, thus going beyond the vague and unsubstantiated claims. By pointing to difficulties to reverse the effects of the contested decision, PEXIM did not substantiate the existence of conditions justifying the stay of execution. Therefore, the Court had no chances for the objective assessment. The arguments that the stay of execution of the decision does not endanger the health or human life, and it is not associated with exposure to the national economy from heavy losses, as well as it does not affect the party’s interest, were during the assessment of the motion irrelevant, since it is not a ground for staying the execution that is provided for in the Polish Law on Proceedings Before Administrative Courts. The SAC held that a reference to likely allegations that were raised in the cassation complaint cannot determine the stay, since at this stage it would be pointless and premature. The Court also noted that the order to stay the execution can be amended or repealed at any time if circumstances of the case change. The party seeking for the amendment or repeal of a decision or action, should demonstrate such a change of circumstances that would make its request justifiable and well-founded.

Categories: Art. 132(2)(ii) IPL | Art. 246 IPL | Art. 255 IPL | Art. 315 IPL | Polish Act on Industrial Property Law | Polish courts | Polish law | Polish Supreme Administrative Court | similarity of goods | similarity of signs | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 2323/11

July 30th, 2013, Tomasz Rychlicki

CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER ROSS R-190192 registered for Firma Handlowa A & S PARFUME FACTORY Marek Asenkowicz, for goods in Class 03 such as perfumes products, toilet water, lavender water, colognes, deodorants for personal use. CARTIER claimed that the contested registration infringes on its company name and the word-figurative trade mark CARTIER R-59579. CHATIER ROSS is detrimental to the reputation of CARTIER’s signs and leads to a weakening of their attractiveness and may cause the loss of trust among buyers of CARTIER’s products.

R-59579

A & S argued that trade marks in this case are not similar both visually and semantically, because the word “chatier” in French means “smooth/polished” and the word “Cartier” indicates the manufacturer. The Polish company cited the judgment of the Supreme Administrative Court of 22 October 2004 case file GSK 811/04 concerning the similarity of the trade marks WELT and WEST IR-621660. A & S also noted that the documents submitted by CARTIER do not prove the reputation of the sign “Cartier”, and pointed to the differences in price of goods bearing both trade marks.

The Polish Patent Office found similarity both of goods and signs, and invalidated the contested registration. While analyzing the evidence on the reputation of the sign “Cartier”, the PPO took into account press articles on the position of the brand in the Polish market and the perception of the consumers. It was irrelevant that the parties use their trade marks to designate goods that differ significantly in price. The PPO ruled that the price of such goods may vary depending on the business strategy of the owner. A & S filed a complaint against such decision. It was dismissed by the Voivodeship Administrative Court in its judgment of 6 July 2011 case file VI SA/Wa 867/11. A & S filed a cassation complaint, but the Supreme Administrative Court in its judgment of 7 March 2013 case file II GSK 2323/11 dismissed it.

CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER COOL MEN R-199458, and the PPO followed the request. A & S complaint was dismissed by the Voivodeship Administrative Court in its judgment of 17 October 2011 case file VI SA/Wa 866/11, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 191/12 dismissed the cassation. The same outcome was in case of the invalidation of the right of protection of the word trade mark CHATIER PURL R-199457 that was owned by the A & S. The Voivodeship Administrative Court in its judgment of 6 September 2011 case file VI SA/Wa 865/11 dismissed the complaint against the decision of the PPO, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 97/12 dismissed the cassation.

Categories: Art. 132(1)(ii) IPL | Art. 132(1)(iii) IPL | famous trade marks | likelihood of confusion | Polish Act on Industrial Property Law | Polish courts | Polish law | Polish Supreme Administrative Court | reputed trade marks | trade mark dilution | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 484/12

July 14th, 2013, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for word trade mark Orlen R-192731 owned by the company ORLEN Spółka z o.o. that was registered for goods in Class 9 and services in Class 42 with the priority of 2002. The request was filed by the big Polish oil company PKN ORLEN S.A. which argued that the questioned sign is similar to its reputed trade mark ORLEN R-125559 that was registered with the priority of 1999. Orlen sp. z o.o. claimed that its company had been registered and has been operating since 1992 under the name “Orlen”, and Orlen S.A. adopted and appropriated that name in 2000. Orlen S.A. called Orlen sp. z o.o. to discontinue use of that name due to getting the right of protection for the earlier trade mark ORLEN. After an exchange of correspondence between the parties, there was no consensus due to divergent expectations, in particular with regard to financial issues. Orlen S.A. proved that there were contacts and negotiations between the parties, subject to the cease of use of the mark ORLEN and argued that the trade mark application was mercantile in nature, becasue the applicant seek only commercial interest and wanted to sell this trade mark. Orlen S.A. submitted copies of correspondence between the parties and photocopies of sale offers. ORLEN Spółka z o.o. filed a complaint against this decision and pointed out that it has offered to sell the company as a whole rather than the trade mark itself.

R-167806

The Voivodeship Administrative Court in its judgment of 24 October 2011 case file VI SA/Wa 1376/11 dismissed the complaint and ruled that an entrepreneur performing its business activities must be guided by the degree of care that is expected from more than the average person in order to predict the consequences of his or her actions and omissions. The content of the right to the company name within the meaning of the Polish Civil Code is not in fact an absolute and unrestricted right that allows to apply on its behalf for a trade mark that is convergent with this company name, regardless of the rights of third parties. Therefore, the person who uses a given sign and does not register it on his or her own behalf as a trade mark, acts at own risk. An entrepreneur who does not seek to acquire protection for its trade mark cannot rely on the earlier right to its company name, when the other party has obtained a right to a sign identical to the name of the business with an earlier priority and through significant investments earned its reputation. In such a situation, an identical trade mark application made by the entrepreneur who has the right to the company after many years from the commencement of his business, when the other party has made a substantial investment and broad actions leading to the reputation of its trade mark, should be regarded as taking unfair advantage of the reputation of the earlier sign.

The Supreme Administrative Court in its judgment of 26 June 2013 case file II GSK 484/12 dismissed the cassation complaint.

Categories: Art. 132(2)(iii) IPL | company name or firm | personal rights or interests | Polish Act on Industrial Property Law | Polish courts | Polish institutions | Polish Patent Office | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 2349/12

June 21st, 2013, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw case file VI SA/Wa 2349/12 dismissed the complaint filed by the International Olympic Committee (IOC) against the decision of the Polish Patent Office that refused to invalidate the word-figurative trade mark Olimpiada Przedsiębiorczości R-220562 owned by Fundacja Promocji i Akredytacji Kierunków Ekonomicznych, and ruled that this sign not similar to the Olympics, Olympic and Olimpiad trade marks.

R-220562

The Court agreed with the PPO that sounding of the sign in question is sufficiently differentiated primarily due to the fact that the mark is composed of two words.

Categories: Art. 132(2)(ii) IPL | Polish Act on Industrial Property Law | Polish law | Polish Patent Office | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 1340/12

April 4th, 2013, Tomasz Rychlicki

TERRAVITA Sp. z o.o. from Poznan requested the Polish Patent Office to invalidate the international registration of 3D trade mark IR-882978 registered for Chocoladefabriken Lindt & Sprüngli AG for goods in Class 30 such as chocolate and chocolate products. TERRAVITA argued that the international registration is a bar for a Polish company to introduce different chocolate products in a shape of a haze or bunny on the national market.

IR-0882978

The Polish Patent Office in its decision of 15 April 2011 case no. Sp. 314/09 dismissed the request. The PPO ruled that TERRAVITA did not prove that the 3D trade mark lacks distinctive character, and there was no bad faith in the trade mark application, because the Polish company did not provide any evidence that Chocoladefabriken Lindt & Sprüngli seek for the protection in order to forcing royalties and block market access. TERRAVITA filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 December 2012 case file VI SA/Wa 1340/12 repealed the decision of the Polish Patent Office and ruled it should not be enforceable.

Categories: 3D trade mark | Art. 129(1)(ii) IPL | Art. 129(2)(i) IPL | Art. 131(2)(i) IPL | Art. 256 IPL | non-traditional trade marks | Polish Act on Industrial Property Law | Polish courts | Polish institutions | Polish law | Polish Patent Office | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case no. Sp. 407/12

February 12th, 2013, Tomasz Rychlicki

Bayerischer Brauerbund e.V. from Germany requested the Polish Patent Office to invalidate the right of protection for the international word-figurative trade mark BAVARIA IR-1051133 registered goods in Class 32 such as beer and non-alcoholic beverages for the Bavaria N.V. from the Netherlands.

IR-1051133

Bayerischer Brauerbund e.V. claimed infringement of the right to a geographical indication, and noted that the questioned trade mark is misleading, and it was applied in bad faith.

However, the PPO has not had the opportunity to comment substantively on the matter, because during the hearings, Bavaria N.V. waived its right. In these circumstances, the Adjudicative Board of the PPO in its decison of 22 January 2013 case no. Sp. 407/12 discontinued the proceedings as irrelevant.

Categories: Art. 131(1)(iii) IPL | Art. 131(2)(i) IPL | Art. 132(1)(i) IPL | geographical indications | geographical name as trade mark | Polish Act on Industrial Property Law | Polish Patent Office | trade mark invalidation.

Trade mark law, case Sp. 472/05

December 17th, 2012, Tomasz Rychlicki

Michael Ovadenko requested the Polish Patent Office to invalidate the right of protection for the word trade mark COFFEE HEAVEN R-147034 owned by Coffeeheaven International Plc. Mr Ovadenko argued that this registration infringed his copyrights.

The PPO decided to stay proceedings and ordered the applicant to come up with a petition to the civil court to determine the existence of his rights. Mr Ovadenko filed a suit before the District Court in Warsaw but it was dismissed. The Court held that the designation COFFEE HEAVEN cannot be deemed as a copyrighted work under the Polish Act on Authors Rights and Neighbouring Rights, according to which the object of copyright should be any manifestation of creative activity of individual nature, established in any form, irrespective of its value, purpose or form of expression (work). The appeal complaint was also dismissed.

The Adjudicative Board of the Polish Patent Office in its decision of 29 November 2012 case no. Sp. 472/05 dismissed the request. The decision is not final yet. The complaint may be filed before the Voivodeship Administrative Court in Warsaw.

Categories: Art. 1 ARNR | Art. 8(1) TMA | company name or firm | copyright law | copyrightable subject matter | personal rights or interests | Polish Act on Authors Rights and Neighbouring Rights | Polish Act on Trade marks | Polish courts | Polish District Court | Polish Patent Office | threshold of creativity | trade mark invalidation | trademark law.

Trade mark law, case Sp. 500/10

December 10th, 2012, Tomasz Rychlicki

Bakoma sp. z o.o. from Warsaw requested the Polish Patent Office to invalidate in part in Classes 29 and 30 the right of protection for the 3D trade mark IR-700040 owned by Compagnie Gervais Danone. Some time ago, Danone sued Bakoma for the trade mark infringement, arguing that Bakoma has used similar product packaging for its line of Frutica yoghurts. Bakoma claimed that the sign in question lacks distinctiveness and it was applied in bad faith, because Danone did not intent to use this trade mark in form it was applied for. Bakoma pointed that Danone also owned registered design for a similar packaging, and the registration of trade mark was intended to extend the protection provided for a design, and it could indicate that Danone wanted to bypass the law.

IR-0700040

Danone argued that Bakoma does not distinguish between the concept of functionality and the technical features that may give the impression that the functionality is a prerequisite to prohibit registration. Patent attorneys representing Danone cited judgments of the CJUE and noted that only forms which are simply based on technical solution are not subject to the trade mark registration, and the sign in question clearly lacks of such solutions. Danone claimed that the package has not technical features because the container does not provide a transfer of filling (from a smaller to a larger compartment), it does not prevent from shedding, and it’s not a compact package. In addition, Danone argued that Bakoma failed to prove that at the time of the trade application on the Polish market, there were similar packaging that would prevent registration of an industrial design (formerly called ornamental designs), which means that the design was new. Danone emphasized that the mark at issue can not be used on to market alone, without any label. The French company also provided evidence that the trade mark is recognized by the consumers. At the time of trade mark application, the sign was present on the market for almost 14 years and it has acquired the secondary meaning. Its use was confirmed in advertisements and price lists.

Bakoma argued that the technical solution solves a problem. In this case, as a result, how to mix one component with another, and how to serve it mixed – a solution to this problem is to move the component. These functional features are technical. Such example was even displayed in the commercial movie during the hearing. Bakoma stated that the 3D sign was not distinctive at the date of application, nor it has acquired the secondary meaning, because a 3D form can be a trademark when the average recipient will associate it with the origin of the goods. 3D form can attract the attention of consumers in terms of aesthetics, but it does not mean that it functions as a trade mark. There is no doubt that goods may be aesthetic, may encourage the purchase, but do not work as a sign. In addition, the sign could not acquire secondary meaning because it is used as a technical function, utility function. Bakoma argued that Danone seeks for the right of protection for a sign that was not intended to be used in the applied form. Even, while deciding trademark infringement case, the Appeallate Court ruled that Danone uses in the course of trade a combined mark. Bakoma argued that through the registration of the trade mark Danone wanted to obtain a monopoly on technical solutions with the use of the institution of the right of protection for a trade mark. It is a clear example of bad faith.

On 19 November 2012, the Adjudicative Board of the Polish Patent Office held its hearing, case no. Sp. 500/10. Danone’s representative has requested the PPO to postpone the hearing to allow him to get acquaint with the pleading filed by Bakoma. The PPO acceded, and set a two-week deadline. The PPO obliged both parties to complete all claims in a period of two months, under pain of losing the chance to raise them at a later date. Bakoma also requested the Polish Patent Office to decide on the lapse of the protection for the 3D trade mark IR-700040, however the PPO did not schedule the hearing in this case, no. Sp. 513/08.

Categories: 3D trade mark | acquired distinctiveness | appearance of the whole or a part of a product | Art. 4 TMA | Art. 7(1) TMA | Art. 7(2) TMA | Directive 89/104/EEC | EU law | industrial designs | non-traditional trade marks | Polish Act on Trade marks | Polish institutions | Polish Patent Office | trade mark invalidation | trade mark lapse | trademark law.

Trade mark law, case Sp. 566/09

December 6th, 2012, Tomasz Rychlicki

On 11 January 2008, the Polish Patent Office granted the right of protection for the word-figurative trade mark SEYDAK R-199882 for goods in Class 4 such as fuel, lubricants, engine and gear oils and hydraulic oils, and services in Class 39 such as parking services, and in Class 43 such as hotel services: motels and restaurants. This sign was applied for by the Polish entrepreneur Przedsiębiorstwo Usługowo Handlowe Marian Seydak.

R-115854

BP p.l.c. filed a request for the invalidation of the SEYDAK trade mark. The British company argued that the questioned sign uses a composition of colors (green and yellow) that are presented in the reputed trade marks owned by BP. The Company referred to the judgment of the Court of Justice of the EU of 3 September 2009 case C-498/07 and the judgment of the Supreme Administrative Court of 20 February 2007 case file II GSK 247/06, judgment of the Supreme Administrative Court of 12 October 2010 case file II GSK 849/09, and the judgment of the Supreme Court of 23 October 2008 case file V CK 109/08. See “Trade mark law, case II GSK 247/06“, “Trade mark law, case II GSK 849/09” and “Trade mark law, case V CSK 109/08“. BP claimed that it is not possible to assume that in the case of word-figurative trade mark, the verbal elements always dominate. The above cited judgments have changed this principle, and provided that sometimes colors or images are the dominant elements that may raise associations between compared trade marks. A patent attorney who was representing Marian Seydak, pointed to the discrepancy of the case-law, and stressed that the mere similarity of background is not significant enough when compared to the visual aspect of both signs. Marian Seydak argued that the trade mark at issue is different in terms of visual aspect, colors, and the layout of letters. He also provided that he is a local entrepreneur, who has just five gas stations distant from the main routes.

R-199882

The Adjudicative Board of the PPO in its decision of 12 November 2012 case no. Sp. 566/09 dismissed the request. The decision is not final yet. The complaint may be filed before the Voivodeship Administrative Court in Warsaw.

Categories: Art. 132(2)(iii) IPL | double color | EU law | non-traditional trade marks | Polish Act on Industrial Property Law | Polish Patent Office | Regulation 40/94 | single colour | trade mark invalidation | trade mark opposition | trademark law.

Trade mark law, case VI SA/Wa 122/12

November 27th, 2012, Tomasz Rychlicki

On 2004, JOOP! GmbH requested the Polish Patent Office to invalidate the right of protection for the word trade mark JUUPI ! R-103654 registered for goods in Class 3 and owned by “AQUAREL” Kosiorek Spółka Jawna. The German company argued that JUUPI ! is similar to its trade marks JOOP! R-64463 and JOOP! IR-73926 that were registered with the earlier priority. The PPO in its decision of 7 February 2006 no Sp. 323/04 dismissed the request. Joop! filed a complaint against this decision, but the Voivodeship Administrative Court in its judgment of 13 October 2006 case file VI SA/Wa 1339/06 dismissed it. Joop! decided to file a cassation complaint. The Supreme Administrative Court in its judgment of 5 July 2007 case file II GSK 98/07 overturned the judgment of the VAC and sent it back for further reconsideration. The SAC held that the PPO and the VAC misinterpreted the provisions of the Polish Industrial Property Law with regard to the knowledge and awareness of the requesting party on the use of the later trade mark for a period of five successive years. The Voivodeship Administrative Court in Warsaw in its judgment of 12 October 2007 case file VI SA/Wa 1403/07 re-examined the case in accordance with what has been determined by the Supreme Administrative Court. The case went back to the PPO. Meanwhile, JOOP! GmbH transferred the rights to JOOP! R-64463 and JOOP! IR-73926 to COTY B.V. COTY appointed its representative (advocate), who submitted to the case file properly paid power of attorney that authorized him to act in this particular case, together with a copy of the relevant register of companies, however it was not recorded in the minutes and documents offered have not been adopted in the case file, which also has not been recorded in the minutes of the hearing, because the Polish Patent Office did not consider these requests and documents as coming from the party of the proceedings. The PPO dismissed the request, and decided that opposed trade marks are not similar, and the reputation of JOOP! R-64463 has not been proven. COTY filed a complaint against this decision.

The Voivodeship Admiistrative Court in Warsaw in its judgment of 2 August 2012 case file VI SA/Wa 122/12 dismissed it and ruled that the existence of legitimacy to file a complaint is subject to examination by the administrative court. This is the basic step, the result of which depends on the further course of the proceedings. The finding by the court that the complaint to the administrative court was brought by a party without legitimacy to file such a complaint, resulting in dismissal of the complaint without examining the merits of the contested decision. The Court held that the transfer (assignment) of trade mark rights in the course of proceedings before the Court for invalidation of the right of protection for a trade mark, i.e. rights to a trade mark that was used as an opposing sign, does not create the right for the new owner to seek legal interest (locus standi) in this proceedings as a party to the proceedings.

Categories: Art. 162 IPL | Art. 164 IPL | legal interest | Polish Act on Industrial Property Law | Polish Patent Office | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 1716/11

November 15th, 2012, Tomasz Rychlicki

On 4 January 2011, the Polish Patent Office invalidated the right of protection for the word-figurative trade mark PIEKARNIA CUKIERNIA Jacek Gaj R-175774. The request for invalidation was filed by the Polish company who owned similar earlier trade mark registration. The PPO cited findings included in the judgment of the Court of Justice of 6 October 2005 case C-120/04 and in the judgment of the Supreme Administrative court of 26 October 2006 case file II GSK 37/06, and agreed with the Courts that by adding to the complex trade mark of the word element, indicating the company from which the goods originate, such method does not remove the risk of misleading the public, since the perception of the mark as a whole may lead to the impression that the goods or services of compared signs come from companies that are economically linked. Jacek Gaj filed a complaint against this decision.

R-175774

The Voivodeship Administrative Court in its judgment of 20 February 2012 case file VI SA/Wa 1716/11 dismissed it. The Court ruled that general perception of trade marks by a potential customer – the consumer, is crucial for assessing the similarity. Verbal elements are generally dominant in the complex signs, but not when they are purely informative, descriptive, including word elements with the name of the other business.

Categories: Art. 132(2)(ii) IPL | Art. 165 IPL | Art. 169(1)(i) IPL | bad faith | legal interest | Polish Act on Industrial Property Law | Polish courts | Polish institutions | Polish law | Polish Patent Office | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 2324/11

October 5th, 2012, Tomasz Rychlicki

Julius Sämann Ltd., the owner of the figurative trade mark WUNDERBAUM IR-0579396, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark Forest Fresh R-183901 owned by S&S Smiczek & Smiczek Hanna Smiczek. Both trade marks were registered for similar goods in Class 5, mainly air freshening products. Julius Sämann Ltd. claimed that because of the similarity of goods there is a risk of misleading the public, in particular by evoking associations with the earlier mark. The company provided also evidence on reputation of its trade mark.

iR-0579396

The Polish Patent Office invalidated the right of protection. The PPO decided that three required conditions had to be cumulatively met in this case: i) the reputation of the earlier mark, ii) the similarity or identity of signs, iii) if it without due cause would bring unfair advantage to the owner of the later trade mark or be detrimental to the distinctive character or the repute of the earlier trademark. The PPO noted that the case law distinguishes between absolute and relative methods of assessing reputation. The first one considers knowledge of the mark and takes into account primarily the percentage of a certain degree of its recognition on the market. The relative method emphasizes different criteria, including the degree of the recognition of the trade mark, the market share in terms of quantity and value of goods sold, the extent and duration of product advertisements marked by the sign, territorial and temporal scope of its use, licenses granted, quality of the goods, the value of the sign in the evaluation of independent financial institutions, the size of expenditures incurred in connection with the promotion of trade, as well as relationship price of substitute goods. The evidence material can be public opinion polls, prizes and awards, press releases, ratings, reports, invoices and other commercial documents, as well as various promotional materials. The Polish Patent Office has adopted a mixed methodology in this case, and ruled that both the evidence on reputation, that was claimed and established before the date of application of the contested trade mark, as well as documents from the later period, strengthen the recognition of reputation of the trade mark WUNDERBAUM IR-0579396. The PPO decided that both trade marks are similar in visual, aural and conceptual aspects. The PPO noted that the market presence and existence of a trade mark which consumers associate with reputation of another sign, harm the interest of the owner. S&S Smiczek & Smiczek Hanna Smiczek filed a complaint against this decision.

R-183901

The Voivodeship Administrative Court in Warsaw in its judgment of 2 June 2011 case file VI SA/Wa 334/11 dismissed it. The Court agreed with the the assessment of the PPO, and repeated that an entrepreneur, who for the goods of the same type, chooses a sign that is similar to a trade mark with earlier priority, given that there is an infinite number of signs to be selected, acts at its own risk. S&S Smiczek & Smiczek Hanna Smiczek brought a cassation comaplaint.

The Supreme Administrative Court in its judgment of 10 July 2012 case file II GSK 2324/11 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that the important drawback of the contested judgment and the decision of the PPO was the assumption on the similarity of the opposed trade marks that was based on the mere fact of the use in their visual aspect, a form of tree, without trying to examine whether the different presentation, including the type and shape of the tree, used in these signs, allowed for the adoption of the view that there exists the similarity of the signs. As a result, the Polish Patent Office, followed by the VAC, accepted the monopoly (exclusiveness) of the company to use very idea of ​​the tree element in its trade mark. The SAC recommended that the VAC should also take a stand on the consequences of the fact that S&S Smiczek & Smiczek Hanna Smiczek used its trade mark for a considerable period of time from 2002. After almost 5 years, Julius Sämann Ltd. initiated a civil action against the S&A. The civil proceedings with regard to trade mark infringement ended before the Supreme Court in its judgment of 14 October 2009 case file V CSK 102/09. The Supreme Court dismissing a cassation appeal filed by Julius Sämann Ltd., based on the argument that long-standing and undisturbed use of the sign in question, in connection with the principle venire contra factum proprium, according to which, if the party continued at a specific practice, it can not rely on its illegality, if other entity accepted such practice in good faith and it could suffer injury as a result of the changes. The application of this rule would come into play especially in a situation, if after the reexamination of evidence, the similarity of opposed signs has been established, and there was not any proof of bad faith on S&S side. The argument that there was bad faith requires evidence and proof, because good faith is presumed. Whether, in connection with long-term use, the S&S trade mark has acquired distinctiveness under average conditions of the market, a feature which is required for any sign to be registered, could speak in favor of the principle of venire contra factum proprium. In addition, marking the goods produced by S&S with its own trade mark, which are the goods of the same kind as products of Julius Sämann Ltd., undoubtedly positively affected the overall demand for such goods on the marker. Therefore, the invalidation of S&S trade mark in situation of its use in good faith, could easily lead to the acquisition of the customers of S&S by Julius Sämann Ltd., without incurring the costs which were attended by S&S in the promotion of the sign, The Court found it difficult to accept. The SAC also held that it should be borne in mind that the right of protection for a trade mark, as every object in the closed list (numerus clasus) of property rights, is admittedly an absolute personal right effective against all (erga omnes), however, this right is not subject to absolute protection. In the light of the general principles for the exercise of property rights as defined in the Polish Civil Code, the boundaries of this right are defined in the Acts and the rules of social coexistence. The Polish Industrial Property Law also refers to these rules. For these reasons, the circumstances giving rise to the allegation of the infringement of the principle of venire contra factum proprium, are one of the limits to the exercise by the owner of its legitimate socio-economic use of the right of protection that derives from the registration of the trade mark. Thus, the invalidation proceedings started against the trade mark Forest Fresh R-183901, in violation of the above mentioned principle, may be considered as the abuse of the right of protection for a trade mark by the proprietor of such a right, that is not entitled to the protection.

Categories: 3D trade mark | acquired distinctiveness | Art. 132(2)(ii) IPL | Art. 132(2)(iii) IPL | Art. 140 CC | bad faith | distinctive character | exhaustion of trade mark rights | famous trade marks | likelihood of confusion | non-traditional trade marks | Polish Act on Industrial Property Law | Polish Civil Code | Polish law | Polish Patent Office | Polish Supreme Administrative Court | Polish Supreme Court | product packaging | reputed trade marks | similarity of goods | similarity of signs | trade mark infringement | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case II GSK 1156/11

September 25th, 2012, Tomasz Rychlicki

The European Commission filed a notice of opposition to the decision of the Polish Patent Office on the grant of the right of protection for the word-figurative trade mark euro SKLEP R-180808 that was applied for by the Polish company Euro Sklep S.A. from Bielsko Biała. The EC said that the trade mark contains an imitation of the European Union flag because it has five distinctive yellow stars (mullets) arranged in an arc (part of a circle) on a blue background – which obviously violates the official symbol of the European Union. Euro Sklep argued that the opposition is unfounded, because the argument that the trade mark is an imitation symbol is an obvious abuse of the law by the EC, since the examination of signs is to be assessed as a whole, and not by attributing the illusory similarities. The Polish Patent Office invalidated the right of protection. According to the PPO, the average consumer who sees the mark with prominent yellow sign EURO accompanied by five-pointed stars in a semi-circle, will associate it with the flag of the European Union. The PPO pointed out that the use of the EURO caption, as well as graphic elements in the form of a bird or incomplete number of stars, does not rule out the conceptual similarity, since use of the word euro as the dominant element of the mark may exacerbate the association of the recipient that he has to deal with an institution agenda of the European Union. Euro Sklep filed a complaint against this decision and noted that in this case the PPO was not dealing with registration of the flag of the European Communities/European Union as a trade mark, but at most, it would be its imitation from a heraldic point of view. However, the PPO did not properly explain this issue. The Company noted that the imitation prohibited under Article 6ter of the Paris Convention is narrower in scope than an imitation, which normally is considered to be unacceptable between the trade marks. According to Euro Sklep, this view is particularly justified because very often the National flags and emblems contain items commonly used, in particular those relating to flora and fauna, such as lions, bears, flowers, etc., which must remain in public domain for free use.

R-180808

The Voivodeship Administrative Court in its judgment of 7 September 2011 case file VI SA/Wa 1036/10 dismissed the complaint and ruled that the fact of using only half of the symbol did not matter from a heraldic point of view, because the PPO was still dealing with the emblem (flag) of the European Union. Euro Sklep S.A. filed a cassation complaint. The Company argued that the presence of the words on the flag is the negation of the principles of heraldry, and itself refutes allegation of heraldic imitation. Euro Sklep pointed out to couple of CTMs registered by the OHIM that share the same symbols of of yellow stars on blue background.

The Supreme Administrative Court in its judgment of 18 September 2012 case file II GSK 1156/11 dismissed the cassation and ruled that the provisions of Paris Convention and Polish Industrial Property Law were introduced to protect National emblems and symbols against dilution.

Categories: Art. 131(2)(iii) IPL | Art. 6ter Paris Convention | company name or firm | International law | Paris Convention | personal rights or interests | Polish Act on Industrial Property Law | Polish Supreme Administrative Court | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case Sp. 202/12

September 11th, 2012, Tomasz Rychlicki

Apple, Inc. filed the request for invalidation of the right of protection for the word-figurative trade mark A.PL registered for goods and services in Class 9, 35 and 42 and owned by the Polish company Internet S.A. from Warszawa. The Polish company also provides an online grocery store under the domain name a.pl. The main arguments presented by the U.S. company were based on confusing similarity between the sign A.PL and national and Community trade marks that are owned by Apple. Arguments based on the unfair use of the reputation were also raised.

R-222253

The Adjudicative Board held the first hearing on 29 august 2012 case no. Sp. 202/12. However, due to the large volume of evidence supplied by Apple, the hearing was adjourned.

Categories: Art. 132(2)(ii) IPL | Art. 132(2)(iii) IPL | computer law | domain names | Internet domains law | legal regulations on computer networks | Polish Act on Industrial Property Law | Polish Patent Office | Polish TLDs | similarity of goods | similarity of services | similarity of signs | trade mark invalidation | trademark law.

Trade mark law, case VI SA/Wa 557/11

September 10th, 2012, Tomasz Rychlicki

On 2 January 2007, the Polish Patent Office granted the right of protection for the word-figurative trade mark GLOBAL R-192958 for the Polish entrepreneur Marek Stefaniak from Gdańsk, for goods and services in Classes 9, 16, 35, 37, 38, 39, 41, 42 and 43. On 30 July 2008, the Swedish company Global Refund Holdings AB filed the request for invalidation for goods in Classes 9 and 16 and for services in Class 35. Global Refund argued that the sign in question is similar to its trade mark G GLOBAL REFUND IR-688582.

R-192958

The Polish Patent Office in its decision of 1 June 2010 case no. Sp. 148/09 found similarity of goods and services and decided that both trade marks share the same word element which may cause consumers’ confusion. Therefore, the PPO invalidated the right of protection. Marek Stefaniak filed a complaint against this decision.

IR-688582

The Voivodeship Administrative Court in its judgment of 17 August 2011 case file VI SA/Wa 557/11 ruled that according to the provisions of Article 255(4) of the IPL, the PPO decided and settles cases in litigation procedure within the scope of the request and should be bound by the legal ground invoked by the requesting party. Thus, the request for invalidation of the right of protection for a trade mark define the scope of the administrative case by defining its borders, both as to the facts and the legal basis for the request. This rule in this proceeding was even more important because it was contradictory procedure, and thus characterized by adversarial nature. A party that initiates the dispute also determines to what extent the statutory requirements were not met in order to obtain a trade mark registration and submits evidence in support of its position. The settlement of case within the scope of the request means that these limits can not be exceeded. In the opinion of the Court, going beyond the scope of the request for invalidation of the registration violates the interests of the holder of the registration. The judgment is final.

Categories: Art. 107 §3 APC | Art. 132(2)(ii) IPL | Art. 255 IPL | Art. 256 IPL | Art. 7 APC | Art. 77 APC | Art. 8 APC | Art. 80 APC | Polish Act on Industrial Property Law | Polish Administrative Proceedings Code | similarity of goods | similarity of signs | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 1616/11

August 28th, 2012, Tomasz Rychlicki

On May 2008, the Polish Patent Office granted the right of protection for the word-figurative trade mark V V V.V. MOTOR R-205440 for goods in Class 12. This sign was applied for by FUSAN HANDICRAFT Co. from Taiwan. On April 2009, Volkswagen AG filed a notice of opposition to the decision of the Patent Office. VW argued that the trade mark in question is similar to its well-known and reputed CTM, and the reputation is obvious and does not require any evidence. After careful examination of the case, the PPO invalidated the right of protection. FUSAN HANDICRAFT Co. filed a complaint against this decision.

R-205440

The Voivodeship Administrative Court in its judgment of 18 November 2011 case file VI SA/Wa 1616/11 dismissed the complaint. The Court ruled that despite the editorial differences in the lists of goods of compared trade marks, the PPO correctly decided that some of the goods are to be regarded as identical. The Court agreed that the dominant element of the trade mark at issue was a composition of graphics and letters placed in the circle. That was another argument in favour of finding the similarity of signs. So the phonetic differences resulting from the different pronunciation of the letters “VV” and “VW” did not neutralize the visual similarity between the marks. The Court did not agree with the argument that the PPO failed to properly assess the similarity of the goods. The PPO did not examine too broadly the comparable lists of goods, becasue there was no doubt that VW using the priority, had the chance to seek for the broader protection for its trade mark.

Categories: Art. 132(2)(ii) IPL | Art. 246 IPL | Art. 255 IPL | Art. 315 IPL | company name or firm | personal rights or interests | Polish Act on Industrial Property Law | similarity of signs | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 137/12

August 3rd, 2012, Tomasz Rychlicki

BP p.l.c filed before the Polish Patent Office a request for the invalidation of the figurative trade mark R-218916 registered for goods and services in Class 4, 31 and 39 and owned by Albert Korman. BP claimed similarity to its figurative CTM no. 1916550, word-figurative CTM BP no. 4100335 and figurative CTM no. 4236279, that were registered with the earlier priority for goods and services in the same classes. BP noted that it uses a combination of green and yellow colors, especially green and yellow figurative element of the trending-like sun rays on a circular or semicircular shape, for the identification of its services. The Company argued that the goods and services of the trade mark at issue are the same or similar. BP also relied on the judgment of the Polish Court for the Community Trade Marks and Community Designs case file XII GWzt 15/08 in which the court found that the BP’s trade mark is highly distinctive, which may result from both the lack of descriptive elements in the sign as well as with the reputation and goodwill, which the mark has among the buyers.

R-218916

The Voivodeship Administrative Court in Warsaw in its judgment 11 April 2012 case file VI SA/Wa 137/12 ruled that due to the fact that the Polish Patent Office correctly decided that there were no indications that the applied trade mark was identical or similar to a trademark for which a right of protection was already granted , therefore, it was pointless to assess the reputation of the previous sign. Since the PPO properly determined that the marks are not similar, any considerations about the use of another’s reputation were not justified. The Court repeated that dissimilar signs cannot produce associations, so there can be no conscious imitation and profiting from someone else’s reputation. The correct view is that the lack of similarity between the signs eliminates the need to examine the use of another’s reputation, as the “precondition” of accepting the argument that the use of reputation has happened, is to determine the similarity between the signs, and the second condition is to establish the applicant’s trade mark has the reputation. This judgment is not final yet.

Categories: Art. 132(2)(ii) IPL | Art. 132(2)(iii) IPL | double color | non-traditional trade marks | Polish Act on Industrial Property Law | Polish Patent Office | reputed trade marks | similarity of goods | similarity of services | similarity of signs | single colour | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 2458/11

July 27th, 2012, Tomasz Rychlicki

On 6 September 2007, the Polish Patent Office granted the right of protection for the word trade mark PRESTIGE OLIMPIC R-197858 for goods in Class 19 such as non-metallic construction materials, timber liners, bonded and not bonded floorboards, flooring lumber, sawn wood, planed and machined wood, construction wood, laminate flooring. This sign was applied for by the Polish company Barlinek S.A. The International Olympic Committee filed a notice of opposition to the decision of the Patent Office. The IOC noted that the name INTERNATIONAL OLYMPIC COMITEE is used since 1894, and the questioned trade mark causes the violation of its property rights and personal interests, in particular the right to the company name. In addition, the IOC claimed that the sign PRESTIGE OLIMPIC is similar to the CTM THE OLYMPICS no. 002827632, registered with the earlier priority, which may cause a risk of consumers confusion. Barlinek S.A. did not agree with such arguments and argued that both trade marks are completely different. The Company pointed out that the goods in Class 19 that are marked with the sign THE OLYMPICS have not been introduced on the Polish market.

The Polish Patent Office in its decision of 6 December 2010 no. Sp. 345/09 dismissed the request. According to the PPO, the words “Olympic” and “Olympics” are similar, but without prejudice to the similarity of signs. The PPO ruled that in this case, the recipients of goods are specialists in the construction industry, who are buying all the supplies at special stores and warehouses or directly from the manufacturers. Therefore, they are deemed as people paying bigger attention, as professionals, to the goods that they purchase. Such professional customers are well-versed in quality, product names and parameters as they are interested and will pay a special attention to who is the manufacturer of the goods.The IOC filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 February 2012 case file VI SA/Wa 2458/11 dismissed it. The Court held that the PPO ruled correctly that multiple signs and trade marks are used as the determination of the Olympic Games. However, no evidence was submitted that the sign THE OLYMPICS is being used in relation to the Olympics. The owner of the CTM did not show the connection between the CTM and any other goods. The sign THE OLYMPICS cannot be deemed as reputed trade mark only because its translation to Polish means Olympic games or Olympics. It is necessary to demonstrate the link between the mark and the goods and/or services. Therefore, the Court decided that the reputation has not been proven. Both signs are written in standard fonts, without any particular distinguishing features, so the same way they are written does not cause that any of the elements of these characters is predominant. The PPO correctly concluded that, despite the similarity of words in the second position in both characters, it cannot be said that the trade marks are confusingly similar. The judgment is not final. The IOC filed a cassation complaint.

Categories: Art. 132(2)(ii) IPL | Art. 132(2)(iii) IPL | Art. 6bis Paris Convention | company name or firm | famous trade marks | International law | Paris Convention | personal rights or interests | Polish Act on Industrial Property Law | Polish Patent Office | reputed trade marks | similarity of signs | trade mark invalidation | trademark law | Voivodeship Administrative Court | well known trade marks.

Trade mark law, case VI SA/Wa 1222/11

June 12th, 2012, Tomasz Rychlicki

On January 2000, the Polish Patent Office registered the trade mark DACH-BUD PERDKOWIE R-116968 for goods in Class 19 and services in Class 37. This sign was applied for by Polish entrepreneurs Krzysztof Perdek and Zbigniew Perdek Zakład Ogólnobudowlany DACH-BUD in 1996. Przedsiębiorstwo Budownictwa Ogólnego DACH BUD Spółka z o.o. from Wrocław filed a request for invalidation. DACH BUD argued that at the time of trade mark application, it was the only business that has used the sign DACH BUD as its company name. In 2002, one of the shareholders of the present company DACH BUD Spółka z o.o., has filed a request for invalidation, but it was dismissed by the PPO and the Voivodeship Administrative Court in its judgment of 22 December 2005 case file VI SA/Wa 337/05.

R-196146

Also in this case, the PPO dismissed the request and decided that the proceedings were separate and independent in relation to proceedings that were held before on the request of the predecessor of DACH BUD. According to the PPO, the request based on the provisions of Article 8(2) of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, was unjustified, and there were no grounds to invalidate the right of protection. That provision states that the registration of a sign which infringes personal or property rights of third parties, has to be refused. All the personal interests that are protected under the provisions of the Polish Civil Code, are identified among the rights of a personal nature. The name (firm) of the limited liability company (spółka z ograniczoną odpowiedzialnością) is the name under which the company is established according to the provisions of the Polish Code of Commercial Companies. The name of business/entrepreneur is treated as its personal right and as such is protected as the right to company name. According to legal commentators, it is an absolute personal right of an entrepreneur, and it is effective, erga omnes, against all. Its content is defined as the ability to use the company name to identify business/entrepreneurs on the market. The company name of a private person or entrepreneurs acting as a commercial companies, is not transferable. The Polish legal doctrine and case law established the view that the registration of a sign that is corresponding to the designation of another entrepreneur, that was used before the registration of that trade mark, affects the personal interests of such entrepreneur. However, that interference in the sphere of personal property, and more specifically – in the right to the name of the entrepreneur, may also occur in case of use of the part of that name, if it is a part that is fulfilling the function that sufficiently individualize an entity, i.e. that allows to uniquely identify and distinguish the company from other private or legal (corporate) persons. The PPO ruled that a similar position should be adopted in case of registration of a figurative sign, which in the word element contains the company name (firm) of another entity, or a significant part of it. The PPO noted that the company did not exist at the filing date of the disputed trade mark, and it could not effectively rely on the infringement of its right to the company name by the disputed sign, Therefore, if the applicant’s right was not the right “with a better priority”, there were no grounds to consider the request. In the opinion of the PPO, in the exercise of its personal interests, the applicant could rely only on the right enjoyed by it exclusively, and not by others. In particular, the company could not claim and invoke any right that was enjoyed by its shareholder – a private person. DACH BUD Spółka z o.o. filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 January 2012 case file VI SA/Wa 1222/11 agreed with the PPO and dismissed it. The Court noted that in case of conflict of rights, in this case, the protection right for a trade mark with a personal interest that includes the right to company name, the priority is to protect the personal interest. However, the registration of a trade mark that is identical or similar to a company name does not prejudge the infringement of the right to a company name. This exclusive right is not a total absolute. Its limits are defined by the coverage (territorial and goals) and the time of actual activities of the entity that is using the name. The collision between identical or similar company name and a trade mark may occur only within these limits. This judgment is not final yet.

Categories: Art. 23 CC | Art. 24 CC | Art. 43¹ CC | Art. 8(2) TMA | company name or firm | personal rights or interests | Polish Act on Trade marks | Polish Civil Code | Polish Patent Office | similarity of goods | similarity of signs | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case Sp. 587/09

April 19th, 2012, Tomasz Rychlicki

On November 2006, the Polish Patent Office granted the right of protection for the word-figurative trade mark EC R-190902 to PPH EVELINE COSMETICS Piotr Kasprzycki, for goods in Class 03 such as skin care and beauty products for women, men, children and teens, perfumes, washing, cleaning, scouring and bleaching preparations, tissues, cotton wool, cotton buds and sticks for cosmetic purposes, and in other goods in classes 05, 16, 21, 42 and 44.

R-190902

Chanel SARL filed a notice of opposition. The company argued that the trade mark EC R-190902 is confusingly similar to many of Chanel’s trade marks, such as CHANEL R-33924 that was registered with the earlier priority of 2 September 1947 for goods in Class 03 such as soaps and toilet preparations, or the figurative trade mark R-57346 that was registered with the priority of 24 March 1979 for goods in Class 03. Chanel also claimed that the right of protection for the trade mark EC should not be granted because it brought unfair advantage to EVELINE COSMETICS.

R-143536

The Adjudicative Board of the Polish Patent Office in its decision of 15 March 2012 case no. Sp. 587/09 invalidated the right of protection. The decision is not final yet. EVELINE COSMETICS may file a complaint to the Voivodeship Administrative Court in Warsaw.

Categories: Art. 132(2)(ii) IPL | Art. 132(2)(iii) IPL | Polish Act on Industrial Property Law | Polish Patent Office | similarity of signs | trade mark invalidation | trademark law.

Procedural law, case VI SA/Wa 886/11

April 10th, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 15 June 2011 case file VI SA/Wa 886/11 ruled that introduction of a decision which has as an integral part a justification, into legal transactions, by serving it to the parties without the signature of the Chairman of of the adjudicative panel is clearly in breach of Article 2558(2) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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 2558
2. Written substantiation of the decision shall be drawn up ex officio within 30 days from the date of its pronouncement. The substantiation shall be signed by the chairman and the member of the adjudicative panel that has drawn up the substantiation. A copy of the decision and the substantiation shall be served upon the parties.

This case concerned the invalidation proceedings of the word trade mark LABRADOR R-203285. The Court ruled the justification is an important part of a decision that allows the Court to follow the reasoning of the PPO which led to the contested decision.

Categories: Art. 255 IPL | Polish Act on Industrial Property Law | Polish courts | Polish law | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 1242/11

March 26th, 2012, Tomasz Rychlicki

On 23 March 2008, the Polish Patent Office granted the right of protection for the word-figurative 3D trade mark PŁ 1764 R-205770, that was applied for by the Polish company Fabryka Wódek POLMOS ŁAŃCUT S.A, for goods in Class 33 such as vodka. The trade mark represents a glass bottle with a blade of grass put inside, and the crest on the bottle.

R-205770

POLMOS BIAŁYSTOK S.A., the company that was the owner of the word-figurative trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081, registered with the earlier priority of 30 August 1985, for goods in Class 33, filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. POLMOS BIAŁYSTOK claimed similarity of signs and identicality of goods. The Company argued that a blade of grass identifies its product’s image, and the long-term presence on the market caused that the trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081 created the belief of the recipients of this type of goods, that the alcoholic product with a grass motif comes from POLMOS BIAŁYSTOK. The Company also claimed that its trade mark is the reputed one, and provided rich evidence material including certificates of quality and market position of vodka sold in bottles with a blade of grass, market research results and reports confirming a strong position of trade marks owned by POLMOS BIAŁYSTOK, as well as articles published in specialized trade magazines. POLMOS BIAŁYSTOK claimed that POLMOS ŁAŃCUT acted in bad faith because its strategy and intention was to create and to file for the right of protection for a product that would look like the brand of “Żubrówka” vodka, by giving it a full set of protected characteristics of the trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081, and this situation happened long before the filing date of the questioned sign.

R-62081

The Adjudicative Board of the Polish Patent Office dismissed the request and decided that the comparision of POLMOS ŻUBRÓWKA BISON BRAND VODKA and PŁ 1764 trade marks gave no similarities. The blade of grass inside a bottle may give potential customers certain associations that it is a vodka based on wisent grass. The PPO relied on the provisions of § 3 of the Minister of Agriculture and Rural Development of 25 January 2007 on the definition of requirements for certain spirit drinks with geographical indications relating to the Polish territory, which specifies requirements for a spirit drink “Herbal Vodka from the North Podlasie Lowland aromatised with an extract of visent grass. The PPO has decided that the vodka producers could use the trade marks containing a blade of grass to indicate the type of vodka. The PPO ruled that these signs are examples of commonly used vodka bottles that were sold in the 80s and 90s of the last century. Such bottles are also present in considerable numbers in the Polish market. Thus, these signs per se do not possess distinctive characteristics. The Adjudicative Board noted that legal commentators emphasizes that the packaging of a product is now deemed as a “silent salesman”, and its appearance affects decisions of customers. A distinctive and visually appealing packaging may cause the client to choose the particular product. The PPO cited K. Jasińska, Naśladownictwo opakowań produktów markowych w świetle prawa własności intelektualnej (in English: Imitation of packagings of branded products in the light of intellectual property rights), Warszawa 2010. The PPO found these arguments relevant to the package created by POLMOS ŁAŃCUT which, in PPO’s opinion differs from other packages available on the market. POLMOS BIAŁYSTOK filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 24 August 2011 case file VI SA/Wa 1242/11 repealed the contested decision and ruled it unenforceable. The VAC decided that the analysis of similarity between the signs including its reputation, in this case, was not exhaustive. The PPO did not consider the dominant elements that draw the attention of the buyer. Although PPO stated that the compared trade marks are 3D signs, but the examination of these elements was reduced to comparison of packages only, i.e. bottles. Although, the PPO stated that as a principle, the visual aspect of a 3D sign, is the shape of package and its content, but these two issues (the shape and contents) were separated in the analysis carried out in this case. The Court found that the long time existence of the characteristic element of 3D signs owned by Polmos Bialystok that were intended for designating vodka products and alcoholic beverages – a blade of grass placed in a simple, transparent bottle, as a whole can easily sink into the minds of customers and build the strength that distinguishes this kind of packagings. The Court pointed out that POLMOS BIAŁYSTOK provided evidence that the original żubrówka can be recognized by a wisent grass blade in the bottle. This would mean that for consumers, contrary to the assessment of the PPO, this 3D element constitutes the dominant part of the trade mark, and it can also influence the perception of the trade mark reputation and the need for protection against dilution. The VAC noted that this case involved more than 20-year presence in the market of a bottle with a grass inside, that was associated with POLMOS BIAŁYSTOK. However, in situation, when the package is transparent, placing a characteristic element inside of the packaging, determines distinctiveness of the whole sign, e.g. two similar bottles. The distinctive 3D form – a blade of grass in the bottle increases the message of each of the word trade marks, brings more originality to signs that are protected for over 20 years. There was no doubt that the floating grass in the bottle is the original message that distinguishes the goods of POLMOS BIAŁYSTOK, and is attributed to the origin of goods produced by this particular company. It was impossible to overlook the fact that consumers are seeing a bottle with a characteristic blade of grass, that is associated by them not only with visent vodka, but they also have a guarantee that this is the original product whose reputation was proved by complex evidence. This means that customers choose a product, guided by the attractiveness of its form, because they “see” in this product a trade mark that originates from POLMOS BIAŁYSTOK, whose quality is known to them. The fact is that all signs have a distinctive element. The Polish Patent Office erred by not attaching any importance to it, despite the fact that POLMOS BIAŁYSTOK was the first company that introduced to market a product with such a distinctive element: a long blade of visent grass.

See also “Trade mark law, case VI SA/Wa 2038/09“.

Categories: 3D trade mark | acquired distinctiveness | Art. 107 §3 APC | Art. 131(2)(i) IPL | Art. 132(2)(ii) IPL | Art. 132(2)(iii) IPL | Art. 145 PBAC | Art. 7 APC | Art. 8 APC | Art. 80 APC | famous trade marks | non-traditional trade marks | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | Polish Administrative Proceedings Code | Polish courts | Polish institutions | Polish Patent Office | product packaging | reputed trade marks | secondary meaning | similarity of signs | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 2041/11

February 15th, 2012, Tomasz Rychlicki

Sfinks Polska S.A. requested the Polish Patent Office to invalidate the rights of protection for word-figurative trade mark CLEOPATRA R-153234 owned by Restauracja CLEOPATRA Bachar Aziz from Lublin. Sfinks Polska owns earlier registered word-figurative trade mark SPHINX R-105162.

R-153234

Sfinks claimed that the trade mark CLEOPATRA R-153234 is similar to its trade mark and argued that it has legal interest in this proceedings as there is a possibility of misleading customers based on the similarity of trade marks. This could be particularly applicable considering the fact that SPHINX trade mark is already known on the market and, therefore, it has a stronger distinctive ability. Sfinks also argued that Bachar Aziz filed its trade mark in bad faith with an intent to use the reputation of Sfinks’ trade marks by suggesting a common origin from a single entity.

R-105162

The Polish Patent Office dismissed the request and decided that the trade marks, in this case, are different in all aspects. Sfinks Polska S.A. filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 27 December 2011 case file VI SA/Wa 112/11 dismissed it. The Court held that the PPO correctly decided that there are visible differences in both signs. The VAC also ruled that the application for a trade in bad faith may occur in a situation in which the applicant is linked with the owner of the earlier sign with a special relationship of trust resulting, for example, from cooperation contracts or agreements. The trade mark can be filed in bad faith in order to acquire a financial extortion from the owner of an earlier sign, or to gain control of that entity, or to force the conclusion of the license agreement, etc. The trade mark can be also filed in bad faith with the intention to block the use of the prior sign or in order to acquire of the market position of the holder of the earlier mark. However, the allegation of bad faith trade mark application has not been proven by Sfinks Polska S.A.

See also “Trade mark law, case VI SA/Wa 112/11“.

Categories: Art. 132(2)(ii) IPL | Art. 151 PBAC | Art. 153 IPL | Art. 164 IPL | Art. 8(1) TMA | Art. 9(1)(i) TMA | bad faith | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | Polish Act on Trade marks | Polish courts | Polish law | similarity of signs | trade mark invalidation | trademark law | Voivodeship Administrative Court.

Trade mark law, case Sp. 500/11

January 30th, 2012, Tomasz Rychlicki

On July 2008, Barbara Hildman requested the Polish Patent Office to invalidate the right of protection of the word-figurative trade mark BIKINI CHRISTIAN DIOR PARIS R-175224 owned by Parfums Christian Dior from Paris, and registered for goods in Class 03 such as body and face care products. Barbara Hildman argued that BIKINI CHRISTIAN DIOR PARIS R-175224 is similar to the trade mark BIKINI R-124158 registered with an earlier priority.

R-175224

Parfums Christian Dior admitted that the trade mark at issue was registered for similar range of goods, but the disputed sign has other distinctive elements such as CHRISTIAN DIOR and a colorful label, which proves that there is no risk of consumers’ confusion. Moreover, the Company argued that the contested mark containing the element CHRISTIAN DIOR is produced and marketed by the producer of luxury goods and it is basically identical to the well-known and reputable company name of the holder – Parfums Christian Dior. These products, as exclusive goods, are always sold at exposed places clearly marked with the company name “Christian Dior”, which reduces to zero the possibility of confusion with cosmetic products to other companies.

The Adjudicative Board of the Polish Patent Office dismissed the request. PPO decided that there is no likelihood of confusion, also, because the questioned trade mark is a carrier of the allure, prestigious image and aura of luxury. The combination of the weak trade mark BIKINI with a strong and recognizable sign CHRISTIAN DIOR PARIS, completely eliminates the risk of confusion between the compared trade marks by the oriented and attentive consumer.

Barbara Hildman filed a complaint against this decision. She argued that merging of the word BIKINI with the words “CHRISTIAN DIOR PARIS” and a graphic element, is like appropriation of someone else’s trade mark. The creation of trade marks by adding to them a company name and its seat distorts the nature and function of a trade mark, because each sign could be easily imitated, only adding a company name to such a sign, and in that case the registration of the earlier mark would be quite superfluous and without legal significance.

The Voivodeship Administrative Court in Warsaw in its judgment of 13 May 2011 case file VI SA/Wa 41/11 repealed the contested decision and returned it to the PPO for further reconsideration. The Court ruled that the PPO did not properly examine the similarity of goods. There were no comparison on „which shelf” these identical goods are placed and who is their recipient, which in consequence it does not exclude the risk of association of the earlier trade mark with the later one. The Polish Patent Office did not consider that the necessary condition for the likelihood of confusion is at least the minimum similarity between compared trade marks. The lack of examination of this condition would mean that the company Christian Dior, or any other reputable or well-known company – due to its brand recognition, is granted the possibility to “append” to a recognizable name, or names – of any signs that are protected with earlier priority, and presenting it as their own. This would also mean illusory protection for an earlier trade mark in a situation where the reputable sign would build the family of marks, without prejudice to its recognition, just by adding a known company name or surname to any sign. In any of such cases, the appropriation by the prestigious brand of less known earlier trade marks, would show that their position and earlier protection do not apply and such protection has not been given any legal effect, and each of such a character – compared with the prestige trade mark, would have been assessed as having weak distinctive ability.

The Polish Patent Office in its decision of 19 January 2012 case Sp. 500/11 invalidated the right of protection for the trade mark BIKINI CHRISTIAN DIOR PARIS R-175224.

Categories: Art. 107 §3 APC | Art. 131(1)(i) IPL | Art. 131(1)(ii) IPL | Art. 131(2)(i) IPL | Art. 132(2)(ii) IPL | Art. 77 APC | Art. 80 APC | Polish Act on Industrial Property Law | Polish Administrative Proceedings Code | Polish courts | Polish institutions | Polish law | Polish Patent Office | trade mark invalidation | trademark law | Voivodeship Administrative Court.

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