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Archive for: trade mark lapse

Trade mark law, case II GSK 582/13

June 26th, 2014, Tomasz Rychlicki

On 1 February 2007, SMYK GLOBAL ASSETS GmbH filed before the Polish Patent Office an opposition against the grant of the right of protection for the word-figurative trade mark lody SMYK NORDiS R-174465 that was registered for the Polish company NORDIS Chłodnie Polskie Sp. z o.o.

R-174465

SMYK GLOBAL ASSETS, the owner of the word-figurative trade mark SMYK R-151707 registered inter alia for goods in Class 30 such as confectionery and sweets, argued that both signs are similar and may cause consumers’ confusion. The questioned registration was also an attempt to use the trade mark that was known on the market for more than twenty years, and which has won the recognition of customers thanks to significant financial and organizational expenditures. SMYK also alleged violation of the right to the company name.

R-151707

NORDIS argued that the compared signs and the goods are not similar and there is no chance for confusion of potential buyers. The Polish company had applied for this sign in May 2003, because it should serve as a continuation of the word-figurative trade marks SMYK NORDIS NORDIS R-93343 and SMYK R-93586 that both lapsed on July 2003. NORDIS had the right to use all signs with the word elements SMYK and NORDIS, because both lapsed trade marks became the bar for registrations of new similar or identical signs for other entities, for two years after the lapse.

R-93343

SMYK GLOBAL ASSETS replied that the provisions of the Polish Industrial Property Law do not afford the institution of “continuation” of trade marks, and the modified sign does not derive legal force from the earlier marks, and the owner cannot be entitled to rely on the law that no longer exists.

R-93586

In 2008, the PPO dismissed the opposition. SMYK GLOBAL ASSETS decided to file a complaint, and the Voivodeship Administrative Court in its judgment of 20 May 2009 case file VI SA/Wa 2315/08 overturned the decision, and ruled that the PPO has made an invalid interpretation of the provisions of the Polish Industrial Property Law on the similarity of signs and the goods with regard to the likelihood of confusion. The Court found that the semantic analysis lead to the logical conclusion that the concept of the term “ice cream” falls within the term of “sweets”, and hence there exist homogeneity of goods bearing compared signs due to the fact that ice cream are goods of “the same kind” as sweets. The homogeneity of goods follows from the semantic analysis of the concepts and the nature of the goods such as “ice cream” (narrower term) and “sweets” (broader term). The VAC also noted that the word element SMYK that is present in both signs, is also endowed with a similar graphics. The case went back to the PPO for further reconsideration.

On 3 August 2009, NORDIS Chłodnie Polskie Sp. z o.o. requested the Polish Patent Office to decide on the lapse of the right of protection for the word-figurative trade mark SMYK R-151707 in part for goods in Class 30, becuse SMYK GLOBAL ASSETS failed to put this sign in genuine use on the Polish territory. SMYK argued that its trade mark was present on the market among others on candies available in SMYK’s stores that are located in big malls.

On December 2009, the Polish Patent Office decided that the right of protection for the word-figurative trade mark SMYK R-151707 lapsed as of 18 December 2008 in part for goods in Class 30 such as confectionery except chocolate and chocolate products, and candy except chocolate and chocolate products. The PPO also dismissed the opposition against the grant of the right of protection for the word-figurative trade mark lody SMYK NORDiS R-174465. SMYK GLOBAL ASSETS filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 20 November 2012 case file VI SA/Wa 397/12 dismissed it. The Court ruled that there was no violation of the company name, because at the time the disputed trade mark was applied, there was no conflict of interest between both parties, because the scope of activities of the two companies was different. SMYK GLOBAL ASSETS has not shown that the registration will disrupt the function of the name of its company, NORDIS manufactures ice cream, while SMYK GLOBAL ASSETS is a producer of items for children, including toys and clothes and was never engaged in the production or sale of ice cream, moreover, the proceedings revealed that NORDIS does not use the sign in a possible colliding area. The Court agreed with the PPO that the trade mark was not applied contrary to law, public order or morality, because this provision, as it was aptly pointed by the PPO, refers to the content or form of how the applied sign is represented. Such contradiction lies in the violation of moral norms, ethics and customs adopted in business. It occurs primarily in the signs of vulgar or offensive content or form. The VAC noted that SMYK might have confused this regulation it with another institution i.e. bad faith. Legal provisions relating to signs applied in bad faith and signs which are contrary to public policy or morality that are included in the Polish Industrial Property Law are separate premises examined in the trade mark application or invalidation proceedings. The Court emphasized that the first condition is associated with the behavior of the applicant, and the second with the sign. SMYK GLOBAL ASSETS filed a cassation complaint.

The Supreme Administrative Court in its judgment of 13 May 2014 case file II GSK 582/13 dismissed it.

Trade mark law, case II GSK 1500/12

January 31st, 2014, Tomasz Rychlicki

The German company Aldi Einkauf GmbH & Co. oHG filed before the Polish Patent Office a request to decide on the lapse of the right of protection for the word trade mark ELDENA R-111776 registered for Piotr Maciejec and Robert Hrebowicz for goods in Class 3 such as cosmetics, soaps, perfumery, deodorants, bath lotions. Aldi Einkauf interpreted its legal interest from the provisions of the Polish Constitution and the Polish Act on Freedom of Economic Activity (in Polish: ustawa o swobodzie dzialalnosci gospodarczej), and argued that the owners did not genuinely used their trade mark for 5 years. As the owner of the word CTM ELDENA No. 003430188, Aldi also noted that the owners of the Polish registration opposed the use of Aldi’s sign in Poland. Mr Maciejewiec and Hrebowicz questioned the legal interest of the applicant claiming that the Aldi has not registered its business in Poland. The company Aldi sp. z o.o. from Chorzów was established and registered in the National Court Register (register of entrepreneurs) on January 2006, and the first stores were opened on 25 February 2008. Therefore, assuming that the company Aldi sp. z o.o. is kind of a representative of the applicant on the Polish territory, the beginning date to establish legal interest of Aldi Einkauf should be the start date of sale of the applicant’s products, as it happened on 25 February 2008. Mr Maciejewiec and Mr Hrebowicz deemed Aldi’s request as premature due to the fact that in the period from 14 January 2005 to 25 February 2008, the disputed right of protection did not restrict the applicant’s activities in Poland, and they decided not to discuss with the arguments on the lack of genuine use, nor to provide any evidence in this matter. Aldi Einkauf argued that it received a cease and desist letter from the owners of the questioned trade mark, and provided evidence that the Polish company Aldi sp. z o.o. is a licensee of the CTM ELDENA.

The Polish Patent Office decided on the lapse of the right of protection. The PPO ruled that Aldi Einkauf proved its legal interest to request for the lapse of the right of protection for the mark at issue, because this sign was a restriction on conduct of Aldis’s business, in which the Company intended to use the designation ELDENA. Aldi submitted the advertising prospect of Aldi’s stores in Poland from 2008, with the photos of a lotion and soaps marked with ELDENA sign, as the evidence of an intention to use the CTM No. 003430188 on the Polish market. The PPO ruled that Mr Maciejewiec and Mr Hrebowicz did not provide any evidence on genuine use of their trade mark. They decided to file a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 April 2012 case file VI SA/Wa 201/12 dismissed it. The Court ruled that the “collision” of two trade mark rights was sufficient to establish the existence of a legal interest to file a request for the lapse of the right of protection. In its essence, the legal interest (locus standi) lies in overlapping of legal spheres of two or more entities, in such a way that the right held by one entity interferes with the full enjoyment of the rights held by another entity.

The Supreme Administrative Court in its judgment of 8 January 2014 case file II GSK 1500/12 dismissed the cassation complaint filed by Mr Maciejewiec and Mr Hrebowicz.

Trade mark law, VI SA/Wa 1962/07

January 22nd, 2013, Tomasz Rychlicki

The Polish company Zakład Gospodarki Komunalnej Organizacja Odzysku Biosystem S.A. requested the Polish Patent Office to take a decision on the lapse of the right of protection for IR-653449 and IR-585713 trade marks registered for goods in the following Classes 1, 2, 3, 5, 6, 7, 8, 9, 11, 16, 20, 21, 24, 25, 29, 30, 32, 34, 35, 36, 39, 40, 42. Both trade marks are owned by Der Grüne Punkt Duales System Deutschland GmbH.

IR-653450

In support of its legal interest, Biosystem S.A. explained that it is one of more than 30 domestic companies that are specializing in recovery of certain categories of waste and like other market participants have the right to use the informational signs. While Rekpol S.A., being the sole licensee of Der Grüne Punkt Duales System Deutschland GmbH trade marks, is sending C&D letters to different businesses, including Biosystem S.A. According to Biosystem the questioned trade marks are spread and used among various companies and as the result of negligence of the owner and licensee these signs cannot fulfill the functions to designate the origin of a particular entrepreneur and have degenerated in respect of all goods and services and become a carrier of information in trade that the product bearing the mark shall be recovered.

IR-653449

The PPO decided that the Polish company had no legal interest (but only factual one) in all classes of goods since it produces none of the goods covered by the protection right (and it doesn’t not sell them), but only provides services related to recovery of certain categories of waste. The PPO only agreed that Biosystem S.A. has shown legal interest in seeking the lapse of the disputed trade mark registration in part, on all services (i.e., services included in Classes 35, 36, 39, 40, 42). In this respect, the PPO considered that the interest can be inferred from the principle of freedom of establishment guaranteed in the provisions of Article 20 of the Polish Constitution and Article 6 of the Act of 2 July 2004 on Freedom of Economic Activity. Biosystem filed a complaint against this decision.

The Voivodeship Administrative Court in its judgments of 15 April 2008 case file VI SA/Wa 1959/07 and VI SA/Wa 1960/07 held that the definition of waste and recycling, shows that waste are the goods. Thus, in the view of the Court it was possible to trade in such goods. The court held that it may be that the scope of activities of Biosystem S.A. include those goods. Hence the need to examine the legal interest in the classes of goods. Legal interest shall be tested at the beginning of hearings, therefore, the VAC did not address the merits of the dispute. The Court ruled that the repealed decisions of the Polish Patent Office should not be enforceable.

The Voivodeship Administrative Court has also decided on other PPO’s decisions with regard to IR-585714 and IR-653450 trade marks and held the same in its judgments of 24 April 2008 case file VI SA/Wa 1961/07 and VI SA/Wa 1962/07. All four cases went back to the Polish Patent Office.

Again, Biosystem argued that the characters have lost their distinctiveness, as they appear on millions of packages of goods from various manufacturers. The company cited a research institute Pentor that consumers do not identify these signs with a particular trader. They are applied by different manufacturers for packaging and currently only indicate that they are subject to disposal (safe for the environment). Biosystem claimed that information as such cannot serve as trade mark and the sign does not identify an entrepreneur.

Der Grüne Punkt-Duales System Deutschland and Rekopol noted that they were active in defending these trade marks against the lapse, because both companies warned many entrepreneurs, that Grüne Punkt trade marks cannot be used without a proper license. In this way, both companies care about the protection of the brand which excludes the possibility of the lapse due to lack of distinctive character. The Polish Industrial Property Law clearly states that the loss of the distinctive character must be the consequence of the owner’s acting or negligence.

The Adjudicative Board of the PPO in its decisions of July 2010 case no. Sp. 363/08 and case no. Sp. 433/08 and ruled on the lapse of the right of protection. The PPO agreed with the argument that Grüne Punkt trade marks became very popular in many markets, especially in Europe. According to the case file, there are around 95,000 licenses granted all over the world for their use, and for example, in Western Europe, they are placed on almost 91% of the packaging. Such method of placing trade marks on a variety of products that originate from different manufacturers does not meet the conditions of the genuine use of the mark in its function.

The Voivodeship Administrative Court in Warsaw in its two judgments of 9 March 2011 case file VI SA/Wa 2169/10 and case file VI SA/Wa 2171/10 dissmissed complaints filed by Der Grüne Punkt-Duales System and Rekopol. Both companies filed cassation complaints. The Supreme Administrative Court in its judgments of 21 November 2012 case file II GSK 1551/11 and case file II GSK 1646/11 dismissed them both which in consequence lead to the final lapse of both trade mark rights on the Polish territory.

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.

Trade mark law, case VI SA/Wa 769/12

November 5th, 2012, Tomasz Rychlicki

Red Bull GmbH requested the Polish Patent Office to decide on the lapse of the word-figurative trade mark TAURUS IR-604762 owned by Gablitzer Getrankeindustrie und Kaffeehandelsgesellschaft M.B.H. from Austria, and effectively registered on the Polish territory since 27 July 1993. Red Bull claimed that Gablitzer Getrankeindustrie und Kaffeehandelsgesellschaft was deleted from the registry of entrepreneurs in June 2001, and attached, as evidence, an excerpt from the register, which showed that the trade mark proprietor after the bankruptcy has been removed from the register of companies. Red Bull provided also a certified translation of the document.

IR-604762

The Adjudicative Board of the Polish Patent Office in its decision of 14 December 2011 case no. Sp. 286/10 ruled on the lapse of the right of protection as on 13 September 2007. Red Bull requested the PPO to correct an obvious mistake in the date of the lapse. The Company noted that the PPO made that mistake, because there was an error in translation into Polish of the extract from the Austrian register. Red Bull attached corrected translation from the German language, explaining the reasons for the correction. The PPO in its order of January 2012 ruled that the mistake was no committed by PPO, but by the translator. Thus, it was not subject to correction. Red Bull filed complaint against the decision.

The Voivodeship Administrative Court in its judgment of 5 September 2012 case file VI SA/Wa 769/12 annulled the contested decision, and ruled it unenforceable. The VAC noted that the public authority is obliged to carry on the proceedings in the Polish language, both in oral actions and in order to keep the documentation of the procedure in Polish, and it’s a legal obligation to use in administrative proceedings translated documents. However, the Court held that the public authority, acting on the request of a party, cannot decline to investigate the content of the document along with its translation, as the results of this examination should be unambiguous, and failure to do so, constitutes a breach of the rules of administrative proceedings that may have a significant impact on the outcome of the case. The case-law of administrative courts generally accepted the rule that – regardless of the requirements of Article 5 of the Act on the Polish language – the evidence is the content of the document created in foreign language, not its translation. Translation does not a substitute a document written in a foreign language, but serves only to determine what is the content of that document.

Trade mark law, case VI SA/Wa 1203/11

April 24th, 2012, Tomasz Rychlicki

VINEX PRESLAV from Bulgaria requested the Polish Patent Office to decide on the lapse of the right of protection for the trade mark MADARA R-97447 owned by Dimyat Polska Sp. z o.o. Earlier, VINEX PRESLAV applied to the PPO to recognise on the territory of the Republic of Poland of the protection for its international trade mark MADARA IR-0929344. In the preliminary refusal sent to the WIPO, the PPO informed that the trade mark MADARA R-97447 is an obstacle to recognise the protection of the trade mark MADARA IR-0929344 on the Polish territory. VINEX argued that the disputed sign has never been used in Poland in relation to the goods covered by the registration, namely goods from Class 33 such as beverages, wine, spirits, brandies and cognacs. Dimyat claimed that it has acquired the right of protection in 1998, but because of “unexplained delay”, the entry in the register of trade marks was made in 2002. The company had to find a licensee, and the PPO by its decision of March 2005, has made an entry of the licensee into the register. However, under the decision of April 2006, the licensee has been removed from the register. The “confusion” around the entry of a licensee undermined Dimyat’s belief and faith whether the company will be able to exercise that right at all. The PPO decided on the lapse of the right of protection.

IR-0929344

Dimyat Polska filed a complaint against this decision. The company argued that there existed serious reasons of non-use. Dimyat became a legal successor of the trade mark MADARA R-97447, however this right was obtained after several years of court battles which finally ended in 2002, and the PPO was aware of this legal disputes. Dimyat claimed that the objective circumstances relating to the acquisition of the trade mark (the acquisition of a company in liquidation), objective circumstances preventing the transfer of its right of protection (the court proceedings in order to recognize the acquisition of a trade agreement to be effective), the objective circumstances relating to the license (all the PPO actions that were associated with the deletion of the license agreement and the appeals) significantly prevented Dimyat from the use of the disputed trade mark.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 October 2011 case file VI SA/Wa 1203/11 reversed the contested decision, ruled it unenforceable, and returned the case to the PPO for reconsideration. The Court held that it is the responsibility of the PPO, to examine the request for the lapse of a trade mark in the light of the existence of valid and serious reasons of non-use, if such an argument is raised by the owner. The Court noted that the Polish Industrial Property Law uses the term “serious reasons” but does not provide explanation of its characteristics, or even a list of examples. The case-law established that these circumstances are all the events and situations, which exclude allegations of blameworthy conduct of the holder of the trade mark registration. These events include primarily those that bear the characteristics of force majeure or other external circumstances impossible to foresee and to prevent them, as well as factual and legal obstacles that are independent from the will of the owner.

Trade mark law, case II GSK 839/10

January 17th, 2012, Tomasz Rychlicki

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

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

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

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

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

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

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

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

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

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

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

Trade mark law, case VI SA/Wa 538/11

July 9th, 2011, Tomasz Rychlicki

This is the continuation of the story described in “Trade mark law, case Sp. 457/08“. Unilever filed a complaint against the decision of the Polish Patent Office in which the PPO decided on the lapse of the right or protection of 3D trade mark R-134678 because of its non-use in the form in which the trade mark has been registered.

R-134678

The Voivodeship Administrative Court in Warsaw in its judgment of 22 June 2011 case file VI SA/Wa 538/11 overturned the decision of the Polish Patent Office and held it unenforceable. However, the Court did not even consider the arguments submitted by the parties. The decision was overturned because of the procedural issues. One of the members of the Adjudicative Board of the Polish Patent Office who was involved in taking the questioned decision did not sign it and later on she retired, therefore, the PPO was not able to obtain her signature. An administrative decision should include at least the name/designation of authority, the addressee of the decision, the conclusion and a signature of the person entitled to issue an administrative decision. If the document lacks a signature, it is not an administrative decision but a draft of such a decision. See also “Procedural law, case IV SA/Po 304/10“. Unilever’s case returns to the PPO where it will be decided on again.

Trade mark law, case II GSK 259/10

April 7th, 2011, Tomasz Rychlicki

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

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

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

Trade mark law, case Sp. 457/08

February 21st, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the registration of the industrial design “bottle with cap” Rp-2543 owned by Zakład Produkcj Opakowań Rosiński i S-ka sp.j. The request for invalidation was filed by Unilever, which claimed that the design infringes on its 3D trade mark R-134678. This 3D trade mark has the form of a bottle for liquids and it was registered on 20 March 2002 (with a priority of 29 January 1999) for goods in Classes 03 and 05 such as detergents, preparations and substances all for laundry use, fabric conditioning preparations, bleaching preparations, cleaning, polishing, scouring and abrasive preparations, soaps, deodorants for personal use, hand washes disinfectants, sanitary preparations, preparations for destroying vermin, insects and noxious animals, fungicides, germicides, bactericides, parasiticides, algicides, insecticides, weedkillers, deodorants, other than for personal use, air freshening preparations, insect repellents. The decision of the PPO was uphold by the Voivodeship Administrative Court. Rosiński filed a cassation complaint and the Supreme Administrative Court agreed with the Polish company and returned this case for reconsideration. The PPO will again decide on the invalidation of the industrial design in question.

Rp-2543

Meanwhile, during the battle over the industrial design, Rosiński requested the Polish Patent Office to decide on the lapse of the right of protection to 3D trade mark R-134678.

Rosinski claimed that the 3D mark in question must be treated, as the so-called weak sign. A bottle as such, is not, remarkably original shape significantly different from other packaging that are available on the Polish market for liquid toilet cleaners. Rosinski emphasized that the registered form of a trade mark significantly differs from the form that is actually used. Only the label, take than 50% of the bottle, and it is insignificant part of a packaging, that attracts attention of the buyer. Rosinski also noted that Unilever cannot argue and prove that the use of the mark in the form without additional elements is genuine use if the actually used a form of a registered trade mark (with labels) was subject to a separate registration (word-figurative trade mark Domestos SPRING FRESH THICK DISINFECTING CLEANER KILLS ALL KNOWN GERMS R-155952). Rosiński added that while the request does not seek to challenge the general idea of registrability of 3 dimensional trade marks such as the shapes of packages. However, such registration has its consequences. While, Unilever was allowed to register its bottle, and as a rule all the other manufacturers are allowed to do, these are weak signs, because such registration does not break the idea of a bottle for fluids.

R-134678

Unilever argued that Rosiński has no legal interest (locus standi) in requesting the lapse and presented a series of evidence on the genuine use of its 3D trade mark. The evidence included market research of 2009 on the knowledge of the DOMESTOS bottle shape amongst consumers, annual (1999-2000) spendings on television advertising of Domestos, black and white and color prints of television commercials, CD with TV ads recorded on it, color printings of press advertisements, series of judgments issued by French and German courts that were consistent with Unilever’s arguments.

R-155952

The Adjudicative Board of the PPO composed of five members (usually the board decides a case in a panel composed of the chairman and two members of a board, but five members’ board may be appointed for hearing complicated cases) in its decision of 20 December 2010 case file Sp. 457/08 ruled on the lapse of the right or protection because of non-use in the form in which the trade mark has been registered. The PPO agreed that Rosiński presented clear evidences on locus standi. All legal actions initiated by Unilever were directed against Rosiński’s freedom of business activity and this justified the request to the PPO to decide on the lapse. The PPO held that all submitted materials do not themselves constitute evidence of the genuine use of a bottle with a red cap without a label. Unilever did not show the place and time, extent and nature of use of its trade mark based on specific and objective evidence. The PPO noted that Unilever is the holder of other trade marks that have the same shape, especially word-figurative trade mark R-155952 and R-107207, IR-787372 and IR-798868 and according to the case-law, if there is a registered form of the trade mark with a label and it is genuinely used, then one cannot argue about the genuine use of another registered trade mark that lacks these additional elements. The PPO also ruled that evidence in the form of private public opinion research was dated on 2005 and did not constitute direct evidence of the genuine use of a green bottle with red cap but rather it tried to prove the renown of another trade mark with a label. Also, according to the case-law of the Polish Supreme Administrative Court, the reputation of a trade mark does not preclude the issuance of a decision on the lapse of this trade mark. The PPO ruled that frames from the TV ads and print ads were poor quality and were not in any way dated, It was also not proven whether the TV ads were aired in Poland. There has not also been proved that these ads were even broadcasted. As regards the print ads there were not provided titles of newspapers that the ads appeared nor numbers or dates of editions, and often other bottles of Domestos product appeared in these materials. Judgments of foreign courts that were submitted in this case are not very important considering that the law under which they were issued is not valid and binging in the Republic of Poland and each case before the PPO is examined individually based on specific facts of the particular situation. Also it was difficult for the PPO to consider these decisions to be persuasive, becasue the 3D sign must retain its individual character and it needs to designate the origin of goods and in this case Unilever had other trade marks of the same shape.

Therefore, in the opinion of the Polish Patent Office, Unilever has not produced evidence of the genuine use of the 3D trade mark R-134678 on the Polish territory during an uninterrupted period of five years after the date of the decision to grant a right of protection. This decision is not final yet. A complaint may be filed to the administrative court. HT goes to Grzegorz Pacek.

Trade mark law, case II GSK 1088/09

February 19th, 2011, Tomasz Rychlicki

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

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

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

Procedural law, case GSK 940/04

January 25th, 2011, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 7 January 2005 case file GSK 940/04 held that the SAC shall apply the measures provided for in Article 135 the Polish Act of 30 August 2002 on Proceedings Before Administrative Courts – PBAC – (in Polish: Prawo o postępowaniu przed sądami administracyjnymi), published in Journal of Laws (Dziennik Ustaw) No 153, item 1270 with subsequent amendments, in order to eliminate breaches of law in respect of actions or acts issued or undertaken in all proceedings that were conducted within the case to which the cassation complaint was filed, if it is necessary to its final ending. The Court is obliged to go beyond the boundaries of a cassation complaint, but it does not mean, however, that the court is not bound by the limits of a case in which the action was brought. It cannot therefore adopt the measures provided for by the law and “interfere” in the new issue which has been or shall be the subject of proceedings before an administrative authority, and acts that should be issued in this kind proceeding.

This case concerned the request to decide on the lapse of the right deriving from registration of a trade mark that was filed before the Polish Patent Office by P.H. “Jubiler” Spółka z o.o. from Poznań. The proceeding before the PPO proved that this case should be focused on other important issues, mainly, the validity of transfer of the registration of the trade mark JUBILER R-60833. The PPO dismissed the request. The company from Poznań filed a complaint against this decision. The Voivodeship Administrative Court in Poznań in its judgment of 16 March 2004 case file II SA 2550/02 dismissed it. P.H. “Jubiler” sp. z o.o. filed a cassation complaint.

R-60833

The Supreme Administrative Court held that the boundaries of the administrative case are determined by the extent of judicial review of public administration, which is provided in Article 1 of the Polish Act of 25 July 2002 on Law on Administrative Courts – LAC – (in Polish: Prawo o ustroju sądów administracyjnych), published in Journal of Laws (Dziennik Ustaw) No. 153, item 1269 with subsequent amendments. Therefore, in the case that concerned a complaint filed on the issue of the lapse of the registration of trade mark, the Court could not examine and apply the measures provided for by law in another case, namely concerning the agreement on the transfer of the registration of the trade mark.

Trade mark law, case VI SA/Wa 1425/10

December 15th, 2010, Tomasz Rychlicki

On 17 July 2008 Eltel Networks S.A. requested the Polish Patent Office to make a decision on the lapse of the right of protection for ELTEL R-75862 trade mark that was registered for ELTEL Przedsiębiorstwo Usługowo-Handlowe Brodnicki Bolesław from Poznań. The PPO concluded that the evidence submitted (invoices), despite using slightly different terms refer to services that correspond to services protected by the registered trademark. Eltel Networks filed a complaint against this decision.

R-75862

The Voivodeship Administrative Court in its judgment of 15 October 2010 case file VI SA/Wa 1425/10 held that documents, in particular orders, invoices, delivery or sale receipts, as well as labels, packagings and related evidence that is demonstrating the real occurrence of goods or services in trade, should be deemed as the essential evidence. But the crucial evidence are the invoices, because labels, tags, hangers, bags and seals for clothing, and pictures of stores do not show and prove the actual sale of goods marked with the sign, nor did they show the measurements and scale. Without invoices, the advertising materials, such as calendars, cards, pictures with the logo, can play only a supporting role. The Court agreed with the PPO and dismissed the complaint. The judgment is not final yet.

Trade mark law, case VI SA/Wa 452/10

July 19th, 2010, Tomasz Rychlicki

In 2009, the Polish Patent Office declared that the right of protection for REAL trademark owned by real SB-Warenhaus GmbH from Germany, lapsed partially. The German company requested for the suspension of the contested decision. The request stated that the contested decision would cause a negative economic impact for real SB-Warenhaus GmbH, which, through a Polish subsidiary, uses lapsed trade mark continuously since 1997. The German company has made far-reaching financial investments to build market position of REAL trade mark, in Poland – around 10 million PLN. In addition, the public awareness of the brand position, has not only financial backing but also social, because the company built on Polish territory large-area markets, which are operated under the name REAL, therefore, renaming the company and its markets would also affect the 13,500 employees. Given the increasing competition in the market, other competitors, could in good faith (or intentionally) use this trade mark. There was therefore a real risk that, until final completion of this case, the distinctive character of REAL trade mark would be weakened.

R-132135

The Voivodeship Administrative Court in its judgment of 15 June 2010 case file VI SA/Wa 452/10 decided to stay the execution of the questioned decision and ruled that if the decision of the Patent Office has not been suspended, REAL trade mark used by the Polish subsidiary could not be used, and others could exploit the position of this trade mark. The Court also agreed that financial outlays made for the creation and operation of REAL’s supermarkets, were large, and the scale of employment in these supermarkets and the necessary change of the company name and the supermarket, could adversely affect the situation of workers.

See also “Trade mark law, case VI SA/Wa 451/10“.

Trade mark law, case VI SA/Wa 173/10

July 18th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 21 May 2010 case file VI SA/Wa 173/10 held that the statutory condition for the lapse of the right of protection is intended to eliminate the rights of protection granted to those signs that are not actually used in trade. The grant of the protection for a trademark is associated with the statutory obligation of genuine use of the mark for goods and services for which the trade mark is registered. It cannot be used symbolically, only to maintain the rights of registration. This case concerned the proceedings on lapse of the right of protection for “transpak gotuj ze smakiem” R-129729 trade Mark owned by Grajewski Zbigniew, Przedsiębiorstwo Produkcyjno-Usługowo-Handlowe TRANSPAK from Puszczykowo.

Trade mark law, case VI SA/Wa 451/10

July 17th, 2010, Tomasz Rychlicki

R-132135

The Voivodeship Administrative Court in its judgment of 15 June 2010 case file VI SA/Wa 451/10 decided to stay the execution of the questioned decision and ruled that if the decision of the Patent Office has not been suspended, REAL trade mark used by the Polish subsidiary could not be used, and others could exploit the position of this trade mark. The Court also agreed that financial outlays made for the creation and operation of REAL’s supermarkets, were large, and the scale of employment in these supermarkets and the necessary change of the company name and the supermarket, could adversely affect the situation of workers.

See also “Trade mark law, case VI SA/Wa 452/10“.

Trade mark law, case VI SA/Wa 1715/09

February 16th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 10 January 2010, case file VI SA/Wa 1715/09, ruled that the registration proceedings is not a source of the entitlement to a trade mark, but it only provides specified changes in the Trade Mark Register with regard to the holder of that right and therefore it is totally different from proceeding related to the invalidation or declaration on the lapse of a trade mark. The standing in registration proceeding cannot be justified based on the same arguments, that were used in the course of proceedings, which aimed to resolve trade mark rights. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

Trade mark law, case II GSK 762/08

April 12th, 2009, Tomasz Rychlicki

Bauer Publishing House owns the word-figurative trade mark TWÓJ STYL R-69382 which is registered for goods such as printed matter, newspapers, magazines, books, packaging, clothing, shoes, advertisement services for third-party hotel and catering services. In 2007 the Polish Patent Office issued a decision on the lapse of the right of protection for TWÓJ STYL trade mark in class 25 for goods such as clothing and shoes.

The Voivodeship Administrative Court in Warsaw in its judgment of 6 February 2008 case file VI SA/Wa 1418/07 agreed with PPO’s decision and dismissed Bauer’s complaint. The Company filed a cassation complaint.

R-69382

The Supreme Administrative Court in its judgment of 12 March 2009 case file II GSK 762/08 has dismissed Bauer’s cassation complaint. The SAC ruled that, according to Polish case law and legal doctrine, the “genuine use” of a trade mark should be directed towards the consolidation of the brand in the market and should seek for its awareness between consumers and competitors. The opposite to “genuine use” is usually the occasional action taken in order to avoid a non-use accusations and actions that are taken other than for purposes of actual business activity. As part of the obligation to make genuine use of a mark, Polish doctrine established the concept of “preparatory action”, which allows to preserve of the right of protection for a trade mark and possible refutation of the non-use allegations. Examples of such “preparatory action” are: a contract of the importation of goods bearing the trade mark, intense advertising in the media or a license agreement for trade mark use. These are activities that aim to genuinely use a trade mark and such actions should be temporarily and functionally associated with the future use of a trade mark. According to the PPO’s findings the owner of TWÓJ STYL trade mark sold clothing with this sign, but this activity ended in 1998 with the last sale of these products.

Trade mark law, case VI SA/Wa 1042/08

April 3rd, 2009, Tomasz Rychlicki

On July 2003 the French company Bongrain S.A. from Viroflay asked the Polish Patent Office to decide on the lapse of the right of protection for APETITO IR-615850 trade mark. The Polish Patent Office must consider whether there has been a lapse of the right of protection for a trade mark at the request of any party having a legitimate interest. The French company claimed its interest based on trade mark application to register the word trade mark APETITO Z-204328.

The request was based on articles 169(1)(i) 169(2) and 169(6) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, item 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, item 1117, with subsequent amendments.

1. The right of protection for a trade mark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exist,
(…)

6. Where a proceeding for the declaration of the right of protection lapsed is initiated, the burden of proof that the trade mark has been used or that serious reasons for non-use of the trade mark exist shall be on the holder of the right of protection.

The Polish Patent Office decided on the lapse of the right of protection for APETITO IR-615850 trade mark in part concerning the goods in Class 29. The owner – APETITO AKTIENGESELLSCHAFT – filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 30 September 2008, case file VI SA/Wa 1042/08 dismissed the case and ruled that in order to aviod the situation of non-use of a trade mark, the use has to take place in the territory of the Republic of Poland. It has to have an unequivocal nature, as well as being real and serious, and should apply to a registered trade mark for goods and services covered. The actual use of a trade mark to prevent the lapse of the right of protection should consist of affixing the mark to goods and putting of such designated goods on the market within a specified period of time. The period of time is crucial for a revocation of the right protection. The preparatory steps to use the trade mark cannot be equated with the reasons to justify the occurrence of non-use of a trade mark. Taking certain preparatory steps which are without a connection with a valid reason that is preventing the use of a trade mark can not determine a dismissal of a request to decide on the lapse of the right of protection. The judgment is not final yet. APETITO AG filed a cassation complaint. See “Trade mark law, case II GSK 120/09“.

Trade mark law, case II GSK 668/08

March 28th, 2009, Tomasz Rychlicki

On 25 January 2005, Société des Produits Nestlé S.A. applied to register the word trade mark CHOKELLA Z-290315 in Class 30, for goods such as: breakfast cereals, muesli, corn flakes, cereal bars, cereal flakes, cereal preparations, food products based on rice, flour or cereals, also in the form of ready-to-use meals. Nestlé was aware that there is a possiblity that the Polish Patent Office rejects the application because of the earlier registration of the trade mark CHOKELLA R-85159, registered with priority on 30 August 1993 for the Company Kelsen The International Bakery A/S from Norre-Snede, which during Nestle’s application was under the grace period based on the provisions of Article 132(1)(iii) 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.

2. A right of protection for a trade mark shall not be granted, if the trade mark is:
(iii) a trade mark earlier registered in the Republic of Poland, whose registration has terminated, provided that an interval between the date of lapse of the right of protection for the trade mark and the date on which a similar trade mark has been applied for by another party, is, subject to Article 133, no longer than two years.

On 3 February 2005, Nestle filed before the PPO a request for a declaratory decision which would affirm the lapse of the right of protection for the trade mark CHOKELLA R-85159, because of its non-use. According to Nestle, the declaratory decision should be effective from the date when an event which involves the effect of the expiry occured, i.e., at the date when the 5-year time period of non-use of a trade mark expired.

On January 2006, The PPO, dismissed the proceedings on the grounds that it was pointless, since before the date of Nestle’s request the rights of protections for CHOKELLA trade mark expired on 30 August 2003, under the law, due to the failure to extend the protection for the next ten years. It was unacceptable for the PPO to decide on the lapse of the rights of protecion for a trade mark, which did not exist at the date of application for such declaration. The PPO indicated that Nestle’s request was filed almost two years after the expiry of the CHOKELLA trade mark, so dismissal of the proceedings was justified because of the lack of subject that would be suitable for a substantive judgment. The PPO ruled that the right of protection shall expire on the date of the decision with effect from the date of filing a request to declare the right of protection for the trademark lapsed. So the decision has a constitutive nature and is applicable ex tunc. The PPO did not agree with Nestle’s argument, and the construction and interpretation of the provisions of Article 169(2) of the IPL.

The Patent Office shall make a decision on the lapse of the right of protection for the trade mark at the request of any party having a legitimate interest therein.

The PPO decided that this prejudge the declaratory nature of the decision on the lapse of the rights of protection and it differs from the provisions afforded in 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.

Article 25.
The right deriving from registration of a trade mark shall lapse:
(i) on expiry of the term of protection;
(ii) on relinquishment of the right by the person entitled under the registration of the trade mark;
(iii) on failure to use the mark;
(iv) on loss of sufficient distinctiveness of the trade mark;
(v) on termination of economic activity on the part of the owner of the right deriving from registration of the trade mark.

Article 26.
In those cases referred to in section 25, items ii) to v), the Patent Office shall cancel the right deriving from registration of the trademark.

Article 30.
(1) Any person having a legitimate interest may submit a request for confirmation of lapse or a request for annulment of the right deriving from registration of a trade mark.

In the PPO’s opinion the provisions of article 169(2), beside different nomenclature of institutions (i.e. registration rights in the TMA and the rights of protection in the IPL), are identical and, even if the TMA did not indicate the date on which the lapse of registration rights or rights of protection, the legal doctrine and the case-law have established a method of calculating such date based on a specific event, for which it is considered the date of filing the request before the Patent Office to decide on the lapse of the right of protection for the trade mark.

Nestle filed a complaint before the Voivodeship Administrative Court in Warsaw, and argued that, contrary to the PPO findings, the IPL quite differently regulates the rules of declaration on the lapse of the right of protection for the trade mark. The Office shall issue a decision on the lapse of the rights of protection for trade mark and the provisions of Article 169(2) of the IPL indicates clearly that the decision is a declaratory act with a constitutive effect, that is, the decision itself, does not abolish the rights, but merely states that the right is expired under the law, which has effect for third parties from the time it was decided.

The Voivodeship Administrative Court in Warsaw in its judgment of 12 December 2007 case file VI SA/Wa 791/07 dismissed the complaint. The Court agreed with the PPO’s findings. Nestle filed a cassation complaint before the Supreme Administrative Court.

The Supreme Administrative Court in its judgment of 21 January 2009 case file II GSK 668/08 annulled the ruling of the Voivodeship Administrative Court. First, the Court noted that the Supreme Administrative Court in its judgment of 23 April 2008 case file II GPS 1/08 held that according to the provisions of Article 169(1)(i) of the IPL, the date of lapse of the right of protection for a trade mark is set on the last day of a period of five successive years, counting from the first date of non-use. See also “Trade mark law, case II GPS 1/08“. The SAC ruled that aforementioned judgment can not be excluded from the examination of the matter of Nestle’s complaint. According to the Court, it is accurate and consist of compelling arguments that are sufficient to answer the question formulated in Nestle case. The Court held that the similarity of the nature of “industrial property” within the meaning of property in the civil law context is in the exclusive use of goods that are understood as property, the beneficial use and disposal of such goods. However, the industrial property differs because its formal nature that is resulting from the relationship with a decision on granting the rights of protection, invalidation and the lapse of rights of protection. The decision to grant the rights of protection for a trade mark mark is clearly a constitutive act creating the legal status for a person. Declaratory decisions can not determine the occurrence of the new legal situation, but must refer to another fact or event occurring earlier in time and combine them with the rights or duties of the entity (legal or natural person). The vague regulations of the TMA encouraged the formulation of views on the constitutive nature of the decision on the lapse of the registration rights of a trade mark under article 26 and 30 of the TMA. The SAC did not agree with two separate opinions issued by judges who were appointed to decide in case II GPS 1/08 and article written by professor Ryszard Skubisz and Marcin Trzebiatowski in which the authors provided examples on declaratory and constitutive nature taken from family law or labour law. According to the Court, the difficulties arise when the vague provisions of formal law create the need for an interpretation if, in connection with the answer to the question of when and on what basis (fact, event, operation), the decision has constitutive or declaratory nature. It was incomprehensible for the SAC to give the examples of judgments of nullity of marriage or fatherhood, the effects of which can not be transferred by the declaratory act on the life of the party in the family and the society. The Court held that similarities between industrial property and the instutution of the property taken from the civil law (property and ownership of tangible goods) should be taken into account to justify the recognition of decision on the lapse of the rights of protection as declaratory one instead of the principles of family law. The Court analyzed the nature of such decision in the scope of the property law rules i.e. the acquisition of property (perpetual use of the property or servitude of the ground) is decided by the declaratory ruling of the civil court following the expiry of the last day of the period when such possession is required by the formal law. The SAC also stated that the day of filing the application for declaration on lapse of the rights of protection does not affect the date of expiry of the right, because it is initiating administrative action on the request of the parties. Whether and when the rights of protection shall lapse should be declared by the findings made during the proceedings for the purposes of the law.

Trade mark law, case Sp. 27/06

January 19th, 2009, Tomasz Rychlicki

On 9 February 2000, the Polish Patent Office granted the right of protection for the word trade mark PICKENPACK R-118206 applied for on 27 September 1996, the Polish entrepreneur Katarzyna Warzocha from Koniecpol, for goods in classes 29 and 30 such as frozen meat products, fish, poultry and game, frozen fruits and vegetables and frozen flour products.

R-118206

German company Pickenpack-Hussmann & Hahn Seafood GmbH from Lüneburg owned an international registration for the word-figurative trade mark PICKEN PACK IR-520553 in class 29 for goods such as meat, fish, poultry and game as well as cooked fruit and vegetables, cooked take-away dishes mainly consisting of meat, fish, potatoes and/or other vegetables; all these goods are deep frozen. The registration was granted in the Republic of Poland on October 2008. German company filed before the Polish Patent Office a request to declare the lapse of trade mark protection based on provision of article 169(1)(i) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

1. The right of protection for a trademark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons for its non-use exist,

Katarzyna Warzocha argued that she started to use the contested trade mark in the previous two years during talks with contractors interested in her offer. She provided information that the PICKENPACK trade mark had been used for frozen products, advertising flyers, business cards and offers of cooperation. Katarzyna Warzocha claimed that the goods labelled with this trade mark were present at the Polagra fair in the years 2001-2005. She also declared that she was able to provide statements of companies, which took supplies of frozen products poduced by her company. German company argued that this was not real evidence of actual use. On 6 November 2008, the PPO postponed the hearing in this case act signature Sp. 27/06 to supplement the evidence.

Trade mark law, case Sp. 574/07

January 10th, 2009, Tomasz Rychlicki

On 19 April 2004 the Polish company Browar AMBER Andrzej Przybylo from Bielkówko applied for two word-figurative trade marks HANZA PILSENER Z-279466 and PRIVAT BRAUEREI EST 1664 HANZA PILSENER EXPORT PREMIUM BIER Z-279465. However, the Polish Patent Office was not able to grant them because there existed an earlier registration for the word trade mark HANSA R-77233, first applied for on 30 December 1991 by German company Dortmunder Actien-Brauerei Aktiengesellschaft for goods in Class 32 such as beer. The right of protection was granted by the PPO on 3 March 1994.

Z-279466

Browar AMBER filed before the PPO a request to issue a decision on the lapse of the right of protection for the HANSA trade mark. The request was based on Article 169(1)(i) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

1. The right of protection for a trade mark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exists.

On 18 November 2008, the Polish Patent Office postponed the hearings case file Sp. 574/07 and ordered the German company to provide evidence of trade mark use. The PPO asked for translated invoices confirming the sale of beer under the brand HANSA and for evidence to demonstrate the actual use of that mark. Dortmunder Actien-Brauerei Aktiengesellschaft has a 2-month deadline to file such documents.

Trade mark law, case Sp. 470/07

October 29th, 2008, Tomasz Rychlicki

On 25 April 2006, Żywiec Group applied for trade mark protection for the CODE Z-310020 sign for goods in class 32 such as beer. However, during the application proceedings the Polish Patent Office found that there existed an obstacle in the form of earlier international trade mark registration owned by the Albert J. Weber Company from Switzerland which was registered among other things for goods in class 32 such as beer, mineral and carbonated water. Żywiec Group filed a motion for a declaration of the expiry of Albert J. Weber’s trade mark before the Polish Patent Office. The trade mark holder did not defend his registration and hasn’t produced any evidence of its use on the Polish market. The Polish Patent Office in its decision of 10 September 2008 act signature Sp. 470/07, set the date of expiry of protection right for CODE IR-0693581 trade mark on 9 October 2007 – the date a request for declaring the expiration was filed.

Categories: Art. 169(1)(i) IPL | Polish Patent Office | trade mark lapse | trademark law.

Trade mark law, case Sp. 220/08

October 28th, 2008, Tomasz Rychlicki

The Polish Patent Office in its recent decision of 12 September 2008 act signature Sp. 220/08 applied the interpretation issued by the Polish Supreme Administrative Court in judgment of 23 April 2008, case file II GPS 1/08. See also “Trade mark law, case II GPS 1/08“. The PPO had to decide a motion to declare the expiration of TORNADO R-65213 trade mark registered for Reckitt Benkiser N.V. The motion was filed by Henkel KgaA which applied for word trade mark TORNADO Z-339055 on 2 April 2008. The disputed trade mark was applied for on 11 April 1989 in class 3 and the right of protection was granted by the Polish Patent Office on 30 October 1990. However, during the proceedings started by Henkel, the holder did not defend his rights, he did not provide any evidence that the mark was ever used in Poland. The PPO set the expiry date of protection rights of the disputed mark on the date of 31 October 1995. The period of 5 years of non-use of a trade mark was set from the day following the date of registration of that mark.

Trade mark law, case file II GSK 138/07

September 10th, 2008, Tomasz Rychlicki

On 19 March 1998, with the notification of 17 September 1996, the Austrian company Red Bull GmbH has received the right of protection for its word trade mark based on the international registration IR-641378 A, in almost all classes (3, 5, 12, 14, 16, 18, 20, 25, 26, 28, 29, 30, 32, 33, 34, 35, 39,41 and 42). On March 2004, the Polish company Przedsiebiorstwo Produkcji Lodów “KORAL” applied for the registration of the word trade mark RED BLUE Z-277694 in Class 30 for goods such as ice creams and other products. However, the Polish Patent Office recognized earlier priority of Red Bull’s trade mark and rejected the application.

Koral requested a motion to declare the expiration of Red Bull’s trade mark rights in Class 30, claiming that the Austrian company failed to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years. The PPO agreed with “Koral” and declared the expiration of Red Bull’s trade mark in its decision of 30 October 2005 case file Sp. 199/04. Red Bull’s evidences of use that were based on the fact that Austrian company has put its trade mark on boxes with sweets which were later sent during different occasions to customers and business partners were found insufficient. The date on which five years period ended was set by the PPO on 9 July 2004 (the date on which the request for invalidation was filed). Both parties filed a complaint against this decision. The Polish company did not agree with PPO’s findings as regards trade mark rights’ expiration date, and the Austrian company claimed that PPO should consider reputation of its trade mark.

The Voivodeship Administrative Court in Warsaw in its judgment of 7 September 2006 case file VI SA/Wa 557/06 held that reputation is not taken into account during proceedings for lapse of a right of protection. Arguments that Koral company has no standing were rejected by the Court because both parties were also involved in unfair competition proceeding before civil court. Once again, both companies filed a cassation complaint.

The Supreme Administrative Court in its judgment of 11 September 2008 case file II GSK 138/07 ruled that the reputation of a trade mark is irrelevant when there are the invalidation proceedings. This is not the proper stage. The reputation could be taken into account during the application proceeding for Koral company’s trade marks. A single fact of non-used Red Bull’s trade mark being an obstacle for registration was a sufficient condition for declaring its expiry. Koral has also called into question the date of expiry of the right of protection. It was the reason for the Court to discuss this issue in the extended chamber. The Supreme Administrative Court in its opinion of 23 April 2008 case file II GPS 1/08 gave a very detailed explanation of that problem. See also “Trade mark law, case II GPS 1/08“.

Trade mark law, case II GSK 252/06

June 30th, 2008, Tomasz Rychlicki

The British company Imperial Tobacco Limited requested the Polish Patent Office to decide in litigation procedure on the lapse of a right of protection for trade mark MOON R-91725 owned by Polish company Altadis Polska S.A. Imperial Tobacco based its legal interest on the fact that it has applied for the recognition on the territory of the Republic of Poland of the protection for the international trademarks with the word element MOON IR-811335, IR-812000, IR-811953 and IR-811992. These trade marks were intended to designate goods in Class 34. The Company wanted to use them in Poland. Imperial Tobacco also pointed out that the trade mark MOON R-91725 was not used on the Polish territory in the way that is required by law.

Altadis demanded the dismissal of the request. The Polish company argued that Imperial Tobacco has no legal interest in seeking the lapse of a right of protection for the trade mark MOON R-91725, because John Player & Sons Limited of Ireland is the company entitled to international registrations of above-mentioned trade marks.

The PPO dismissed the request and PPO’s decision was upheld by the Voivodeship Administrative Court in Warsaw in its judgment of 30 March 2006 case file VI SA/Wa 2048/05. The Court based its reasoning on the lack of legal interest. Imperial filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 February 2007 case file II GSK 252/06 held that the entrepreneur who plans to place on the domestic market identical or similar goods bearing a sign that is identical or similar to registered but unused trademark, has a legal interest in requesting the PPO for the decision on the lapse of a right of protection for the trade mark because of its non-use by the holder, provided, however, that such entrepreneur will demonstrate that its intention is real and genuine, especially if it’s a manufacturer of such goods and introduces them to a common market under the sign.

Trade mark law, case II GSK 698/08

April 28th, 2008, Tomasz Rychlicki

On 15 April 2003 the Polish Patent Office (PPO) received a request filed by Kosmetyczno Lekarska Spółdzielnia Pracy IZIS from Warsaw to declare the lapse of protection rights for the AMBER R-98839 trade mark registered for Evyap Sabun,Yag,Gliserin Sanayi Ve Ticaret A.S., Istambuł (Turkey) in class 3 for goods such as bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. This trade mark was registered on 19 November 1997, with priority date as of 9 February 1994. The request was based on non-use of AMBER trade mark.

IZIS justified its legal interest in requesting the PPO to decide on the lapse of the right of protection because it is the manufacturer of products in class 3 (cosmetics: creams, cosmetics milks, lotions, tonics) that are labeled with AMBER sign and because of the fact that the Polish Patent Office rejected IZIS’s request of 10 April 2003 for invalidation of the right of protection of the disputed trade mark, and held that the AMBER R-98839 trade mark was an obstacle to the application for registration of IZIS word trademark AMBER – IZIS, Z-161082.

During the proceedings before the PPO the Turkish company submitted evidence of actual use of the disputed trade mark only in respect of soaps. On 5 April 2003 the PPO ruled on the lapse of the right of protection for AMBER R-98839 for goods in class 3 such as “cosmetics”. The Turkish company filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw. The VAC rejected the motion in its decision of 10 March 2008, case file VI SA/Wa 1811/07. The Court held that the term “cosmetics” covers a wide range of cosmetics products intended for various use: industrial, cleaning, protective or fragrance and beautification. The fact that soaps are within the scope of “cosmetics” did not justify the findings of an actual use of the disputed trade mark in respect for all cosmetics where the mark is actually used only in respect of soaps, which were, moreover, identified by the applicant in the description of goods right next to cosmetics. The court also noted that according to article 169(6) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

Where a proceeding for the declaration of the right of protection lapsed is initiated, the burden of proof that the trademark has been used or that serious reasons for non-use of the trade mark exist shall be on the holder of the right of protection.

Or as the Court said, passivity during the burden of proof is the problem of the trade mark holder. In this case, the Turkish company during proceedings before the Polish Patent Office has not disclosed the existence of valid reasons for non-use, for any goods except soap. The company from Turkey filed a cassation complaint before the Supreme Administrative Court (SAC). The SAC in its judgment of 3 February 2009, case file II GSK 698/08 held that the Nice Classification of goods is not conclusive as to the nature of goods belonging to each of the classes. It has only an auxiliary nature during the process of formulation of lists of goods for signs that were applied for to the Patent Office as to organize the goods and services in accordance to its characteristics.

In case of a dispute before the Patent Office in proceedings for the declaration of lapse of the rights of protection for trade mark as regards to the part of the goods, as a result of non-use of a registered trade mark, it is required to assess the actual attribiution of the disputed goods to a category, regardless of how it the list of these goods was drawn up. In SAC’s opinion, the Polish Patent Office, followed by the first instance court, have failed to analyze the similarity of the goods for which AMBER trade mark has been registered for and their attribution to a given category. Both the PPO and the VAC did not answer the most important question do soap and cosmetics belong to the same category of goods? It was required by the PPO to assess what is the actual attribution of the disputed goods to what category, regardless of how the list of these goods was done. If you lodge a complaint on the decision of the Polish Patent Office, the first instance court (the Voivodeship Administrative Court in Warsaw) is obliged to review the decision in terms of its compliance with the substantive law and rules of conduct. The SAC held also that the PPO did not examine sufficiently the question of whether there was the important reasons for non-use of a registered mark, and this was due to the ongoing proceedings on the invalidation of the right to registration of the trade mark. The Supreme Administrative Court annulled the contested judgment, and ordered the Voivodeship Administrative Court in Warsaw to reconsider the case.

Trade mark law, case II GSK 114/07

December 11th, 2007, Tomasz Rychlicki

Clinique Laboratories, LLC, the owner of the word-figurative trade mark C CLINIQUE R-51732 requested the Polish Patent Office to decide on the lapse of the right of protection for the word-figurative trade mark CLEANIC’ R-95489 owned by the Polish company HARPER TRADE Sp. z o.o. Clinique Laboratories justified its legal interest by the fact that, at the time of filing the request, the company was deprived of full access to its earlier Polish trade mark registration because the later trade mark invaded its scope of protection with regards to goods in Class 3, mostly cosmetics. Further arguments raised included that the right to business activity freedom, protected by the Polish Constitution and Article the Polish Act on Business Activity.

R-51732

The PPO decided on the lapse of the right of protection. HARPER TRADE Sp. z o.o. filed a complaint against this decision. The Voivodeship Administrative Court in its judgment of 16 October 2006 case file VI SA/Wa 770/06 dismissed it. HARPER TRADE Sp. z o.o. filed a cassation complaint.

R-95489

The Supreme Administrative Court in its judgment of 21 November 2007 case II GSK 114/07 repealed the contested judgment and the decision of the PPO, deciding that the interest specified by the owner of an earlier trade mark was not a legal interest, as defined by the Administrative Procedure Code, because it was not current but, at most, a future interest connected to events that may not happen, because the owner of the later unused trade mark may not decide to produce cosmetics in Class 3 and never trespass upon the scope of protection of the earlier mark. The Court also concluded that the provisions of the Polish Constitution and the Act on Business Activity were too vague to constitute a real legal interest.

Trade mark law, case II GSK 127/07

October 5th, 2007, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 20 September 2007, case file II GSK 127/07, unpublished, ruled that other requirements must be satisfied while starting the invalidation proceedings, and the other in the request on the lapse of a right of protection for a trademark. The right of protection for a trademark right may be invalidated in whole or in part, if it has been granted contrary to the statutory conditions (as defined in article 164 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments), and the lapse of a right of protection is dependent on the occurrence of other, well-defined conditions (articles 168 and 169 of the IPL). Also the implication of each of these decisions differs – at the ex tunc in the invalidation proceedings, and after fixed period or the occurrence of a particular situation constituting a condition of the lapse.

Trade mark law, case II GSK 173/06

November 8th, 2006, Tomasz Rychlicki

On 10 December 2003, Eska Nord Sp. z o. o. requested the Polish Patent Office to decide on the lapse of the right of protection for “Radio 73,2 Fm ESKA” R-98909 trade mark due to the non-use. The applicant explained that since 1993 it operates as a commercial radio station that broadcasts its program in the Tri-City region (Gdańsk, Sopot and Gdynia) and the surrounding area, using the ESKA-NORD brand. The applicant has claimed its legal interest (locus standi) from the fact that the District Court in Gdańsk issued on 1 August 2003 an order prohibiting Radio ESKA S.A. the broadcasting at radio frequency 94.6 MHz in Gdynia and 90.7 Mhz in Gdansk, and prohibiting radio broadcasting and advertising under the names Eska and Eska Trójmiasto.

R-98909

Radio Eska S.A. sought to dismiss the request and provided the correspondence with the National Broadcasting Council on the use in 1999, of the questioned trade mark in the registered form. The company explained also that it ceased using in “73.2” number in the questioned sign as it was justified because it changed the broadcasting frequency under the Regulation of the Minister of Communications dated 16 December 1999 on the frequency allocation and frequency ranges in the Republic of Poland and the conditions of their use Official Journal No 109, item 1252.

The PPO its decision of 21 February 2005 dismissed the request and pointed out that timeframe to be considered whether disputed trade mark was used and in what form includes the period of 5 year, i.e. between dates of 10 December 1998 and 10 December 2003.

The Voivodeship administrative Court in Warsaw in its judgmen of 7 February 2006 case file VI SA/Wa 1749/05 dismissed the complaint. The Court, pointed out to the fact that the use of the trade mark in broadcasted programs and in correspondence was the use in the course of trade and it met the requirement of genuine use as referred to in the IPL. The Court also noted that under Article 19(1) of the TRIPS the important reasons of the non-use is justified, are import restrictions or other government requirements for goods or services protected by a trademark.

The Supreme Administrative Court in its judgment of 10 October 2006 case file II GSK 173/06 held that the use of a trade mark in a form that differs from that for of a trade mark for which it was granted a right of protection, but in elements which do not alter its distinctive character, is also deemed as the genuine use. The SAC ruled also that there was the use of the trade mark in the form of RDS (Radio Data System) during the broadcast of radio programs and within a website available at eska.pl, presenting the logo of the station. In the first case while listening to the station with a radio equipped with RDS there were presented verbal communications, including communication with the station name (in this case: Radio Eska).