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Archive for: trade mark refusal

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

January 12th, 2011, Tomasz Rychlicki

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

Z-334116

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

R-178995

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

Trade mark law, case VI SA/Wa 1124/10

January 11th, 2011, Tomasz Rychlicki

The Polish company GRAAL S.A. from Wejherowo applied for the word-figurative trade mark ERAFISH Z-340740 for goods in Classes 29 and 31. The Polish Patent Office refused to grant the right of protection for goods in Class 29. The PPO found that the applied sign is similar to the CTM EvraFish no. 4948618 owned by Stek-Rol. GRAAL filed a complaint against this decision.

Z-340740

The Voivodeship Administrative Court in Warsaw in its judgment of 24 September 2010 case file VI SA/Wa 1124/10 dismissed the case. The Court held the risk of confusion is based on wrong, inaccurate attribution of goods bearing a given trade mark to a right holder by an average consumer. The more distinctive trade mark with the earlier priority is, and the goods or services bearing the marks compared are more similar, the bigger risk of confusion exist. However, when the signs are identical, and the similarity between the goods exists, there is a significant possibility of confusion, or association of both signs, even for professionals. The relationship between a particular product or service and the sign marking it is formed in the minds of buyers.

The Court also noted that the likelihood of misleading consumers as to the origin of products bearing similar trade mark increases with the degree of similarity of the signs. Therefore, the buyer may assume that the owners of such similar signs are in organizational or legal relationship. The existence in the course of trade of a similar trade mark may suggest that the sign is merely a variation of an earlier registered trade mark and comes from the same entity. This was even more dangerous, since both signs are intended to mark the same goods. If the signs are so similar and there are the same goods/services selected, one cannot exclude the confusion among the consumers of those goods because consumers do not always analyze the structure of the mark before selecting the provider of goods or services. This judgment is not final yet.

Trade mark law, case II GSK 619/09

December 24th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 4 November 2010 case file II GSK 619/09 ruled that weak distinctive characteristics of trade marks at issue, obviously did not justify, the infringement of these rights. Nevertheless, the proprietor of the mark mark with weak distinctive characteristics, and this is due to the reduction in this sign to presence of informational elements, has to tolerate the existence of a competitive trade marks, containing similar elements that have informational nature. The limit of that tolerance is the similarity of opposing signs, if it could mislead the purchaser of the goods.

Trade mark law, case VI SA/Wa 11/10

November 23rd, 2010, Tomasz Rychlicki

On 22 October 1999 Jarosław Synowiec Agencja Kurier-Media from Iława applied for the word-figurative trade mark “KURIER Iławski TYGODNIK POWIATU IŁAWSKIEGO” Z-208891 for goods and services in class 16 and 42 such as publishing and printing a newspaper. The Polish Patent Office refused to grant the right of protection. The PPO found that the applied trade mark is also the title of the magazine with the same graphics and colors, which is published by Wydawnictwo Pomorskie in which Jarosław Synowiec previously worked as editor in chief. Due to long-term presence on the Polish market, this sign became widely known in public. Jarosław Synowiec filed a complaint against this decision.

Z-208891

The Voivodeship Administrative Court in Warsaw in its judgment of 6 July 2010 case file VI SA/Wa 11/10 dissmissed the complaint. According to the Court, the PPO reasonably assumed that the registration of the questioned trade mark was inadmissible because of the conflict with the law and rules of social coexistence. The registration of signs, whose use as a trade mark could be an act of infringement of property rights of third parties, such as the right to the company, the right to press title, copyright, etc. is not allowed. The VAC held also that whenever the collision of the rules specific to the system of formal protection (the principle of registration of signs) with the principle of protection of designations used effectively and genuinely in business occurs, the priority is given to the latter.

Trade mark law, case VI SA/Wa 501/10

October 25th, 2010, Tomasz Rychlicki

The Polish company EDIPRESSE POLSKA S.A. from Warsaw applied for the right of protection for word trade mark NEW Z-294152 for goods in Classes 16, 35 and 41. The Polish Patent Office refused to register this sign claiming that it does not have sufficient distinctive character that would allow to individualize the source of the goods. The PPO concluded that the sign is not distinctive, because it informs that the goods and services for which the registration is sought, are… new. EDIPRESSE filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 May 2010 case file VI SA/Wa 501/10 held that the common practice of the Polish Patent Office in registering trade marks containing descriptive elements was definitely too liberal, especially if it is considered that while examining the registrability, the future interest of other entrepreneurs in access to a given sign should be taken into account. According to the VAC there must be a significant reduction in the number of registered trademarks with the descriptive elements, geographical or generic names, as the result of understanding the proper function of a trade mark, because the primarily function of a trade mark is to indicate the origin of the goods from a particular undertaking. If, therefore, the applied sign may be perceived by the average consumer as information about the characteristics (properties) of goods or services, the origin from a particular geographic area, it cannot be a trademark due to lack of distinctive ability which is required for trade marks. The importance of the principle of freedom of access to certain descriptive signs must therefore lead to a significant reduction in the number of signs with descriptive elements that were registered as individual trade marks. The judgment is not final.

Trade mark law, case VI SA/Wa 2127/09

September 10th, 2010, Tomasz Rychlicki

The Polish company AFLOFARM Fabryka Leków Sp. z o.o. applied for the word-figurative trade mark “tabletki na uspokojenie Aflofarm” (in English: Aflofarm tablets for calming down) Z-298475 for goods in classes 03, 05 and 44. The Polish Patent Office refused to grant the right of protection in part of the goods in class 5 covering dietetic substances for medical use, food for babies. The PPO held that the right of protection shall not be granted for a sign that misleads the public as to the nature and properties of the good. Such misleading information is a sign that may cause false image of the average buyer as to the nature of the product, its quality or properties. The assesment of content of a signs is made by him or her from the perspective of the average consumer. The interest of the buyers requires the assumption that the sign is misleading, once a small group of consumers may be misled as to the characteristics of the goods or services, since these characteristics may affect the decision taken, in relation to those goods or services. Under such assumption, the assessment cannot be affected by anything outside the relationship sign – the goods with the reasonable buyer’s idea on such relationship. It follows that the sign “tabletki na uspokojenie Aflofarm” on the goods listed in class 5 should be considered as misleading the buyers as to the nature, purpose, or functional characteristics of these goods.

Z-298475

AFLOFARM argued, that it’s not true that the buyer/consumer “is left alone” with a sign and a product bearing the questioned trade mark. These products are only available in pharmacies and are issued only by a professional that is a pharmacist. Thus it excludes the confusion of the average consumer as to whether he or she has bought the wrong product.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 March 2010 case file VI SA/Wa 2127/09 agreed with AFLOFARM’s arguments and reversed the contested decision. The Court also noticed that “tabletki na uspokojenie Aflofarm” trade mark was applied for dietary agents/means for medical use, rather than dietary substances for medical purposes. For this reason, the Court held that the goods that are marked with a “tabletki na uspokojenie Aflofarm” trade mark will not cause consumers’ confusion since products of such indications or effectiveness can be classified differently, depending on their registration or application.

Trade mark law, case VI SA/Wa 21/10

September 7th, 2010, Tomasz Rychlicki

The Polish company Atlantic sp. z o.o. applied for the word-figurative trade mark ATL ATLANTIC Z-313731 in classes 03, 18 and 25. The Polish Patent Office refused to grant the right of protection in part of the goods covering deodorants for personal use, soaps, perfumery, cosmetics, cosmetic kits, portable suitcases for cosmetics, travel bags for clothing, shopping bags, beach bags, handbags and women handbags.

Z-313731

The PPO held that there are similar and conflicting trade marks such as Atlantic R-141375 for goods in class 18, Atlantic IR-631190 and ATLANTIC IR-787876 for goods in class 03.

R-141375

The Voivodeship Administrative Court in Warsaw in its judgment of 7 April 2010 case file VI SA/Wa 21/10 dissmissed Atlantic’s complaint and upheld the contested decision. The Court ruled that in all cases where the problem of the similarity of the opposed trade marks arises, it is the result of two closely related issues, i.e. the similarity of signs and the similarity (homogeneity) of goods/services for which the signs are applied for, registered or used. Both these factors determine the scope of trademark protection (citing M. Kępiński [in:] Niebezpieczeństwo wprowadzania w błąd odbiorców co do źródła pochodzenia towarów w prawie znaków towarowych, ZNUJ PWOWI zeszyt no 28 of 1982, p. 10). The VAC held that the convergent elements of disputed signs have crucial meaning for the buyers and such conclusion is justified from a psychological point of view, since the purchaser keeps in mind only a general representation of the sign for which is he or she looking for. Therefore the buyer chooses a sign based only on dominant elements while ignoring differences.

Trade mark law, case II GSK 607/09

August 31st, 2010, Tomasz Rychlicki

TRODAT POLSKA Sp. z o.o. from Warsaw applied for the right of protection for Pieczątka 2 Z-294822, Pieczątka 3 Z-294821, and Pieczątka 4 Z-294823 trade marks in class 13. Pieczątka means “stamp” in English. The Polish Patent Office in letters dated 27 March 2007 informed the applicant that these signs are not capable of serving as trade marks due to lack of sufficient distinctive character and urged Trodat to submit comment on this issue. The applicant did not respond to the letters sent by the PPO, in particular, Trodat did not take any position on the reported lack of sufficient distinctive character.

Z-294821

The Supreme Administrative Court in its judgment of 14 July 2010 case file II GSK 607/09 held that the burden of proof rests on those who seek for legal consequences from a particular fact for itself (the applicant), it results from a series of obligations incumbent on the applicant, including the obligation to provide explanations, to take an active part in the proceedings and to submit precise requests. These obligations are provided in Articles 145(2) and 152 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, in connection with Regulation of the Prime Minister of 8 July 2002 on filing and processing of trademark applications, Journal of Laws (Dziennik Ustaw) No 115, item 998 with subsequent amendments.

Article 145
1. Subject to paragraph (2), where the Patent Office finds that the statutory requirements for the grant of a right of protection for a trademark have not been satisfied, it shall make a decision on refusal to grant the right.
2. Before the decision referred to in paragraph (1) is made, the Patent Office shall fix a time limit, within which the applicant is invited to react on the collected evidences and documents which imply the existence of grounds that may cause the right of protection to be denied.
3. Where the statutory requirements are found not to have been satisfied in respect to only certain goods, a right of protection for the trademark in respect of these goods shall be first to be refused by the Patent Office. On the respective decision becoming final the Patent Office shall grant a right of protection for the trademark in respect of the goods, for which it can be granted.

Article 152
The Prime Minister shall, by way of regulation, determine the detailed requirements to be satisfied by a trademark application, the detailed rules and procedure to be applied in the course of examination of trademark applications including, in particular, the extent to which the relevant information may be disclosed to the public after the expiration of the period referred to in Article 143 and the manner in which it is made available, as well as the extent to which the Patent Office is authorised to make corrections in the list of goods and their classification. The requirements to be satisfied by trademark applications may not be determined in such a way as to encumber the applicant with excessive and unreasonable impediments.

The renunciation of the party – despite the invitation issued by the Polish Patent Office – to submit sufficient evidence, explanations, positions may not be of no importance in a situation where the party alleges that the PPO erred in its decision in this particular issue, as a result of breach of the obligation imposed on the PPO to clarify the circumstances of the case in accordance with Article 7 and 77 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments.

Article 7
Public administration bodies shall uphold the rule of law during proceedings and shall take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public.

Article 77.
§ 1. The public administration body is required to comprehensively collect and examine all evidential material.
§ 2. At each stage of proceedings a body can amend, supplement or withdraw rulings made regarding the examination of evidence.
§ 3. An body conducting proceedings as a result of having been required to do so by the body having jurisdiction to settle the case (Article 52) may, on an ex officio basis or on application by one of the parties, hear new witnesses or experts on circumstances that form the objects of such proceedings.
§ 4. Universally accepted facts and facts known to the body ex officio do not require proof. Parties to proceedings should be informed of facts that are known to the body.

The SAC noted that the provisions of the IPL that provides the possibility to request the applicant by the PPO to submit comments or issue a statement, in fact, serve to define the limits of administrative case, such as defining what is to be examined by the PPO and to what extent this should occur. The PPO is required to make an invitation before taking a decision, therefore, before deciding on the matter. At this stage, it is possible to have the intervention of the parties, if, contrary to the intentions expressed in the request/application, the PPO, for example, does not cover by its activities of all elements of the case, or unreasonably restricts its borders.

Trade mark law, case VI SA/Wa 503/10

July 20th, 2010, Tomasz Rychlicki

In January 2010, Polish company LMW sp z o.o. represented by a patent attorney filed via the Polish Patent Office (PPO) a complaint to the Voivodeship Administrative Court in Warsaw, against the decision of the PPO on the refusal to grant a right of protection for LIBERTY MOTORS trade mark Z-315048.

Z-315048

In the Court’s order of 8 April 2010, a representative of LMW was asked to remedy the formal deficiencies of a complaint by submitting a power of attorney/proxy to act on behalf of the applicant before the voivodeship administrative court or before administrative courts and the document setting out the power to represent the applicant, i.e. the original or a certified copy of the full entry from the National Court Register, within 7 days from the date of service of summons under pain of dismissal of the action. This summons were served on 16 April 2010. The deficiencies were not removed.

The Voivodeship Administrative Court in Warsaw in its order of 31 May 2010 case file VI SA/Wa 503/10 rejected LMW’s complaint. The Court held that according to provisions of article 58 § 1 pt 3 of the Act on the Law on proceedings before administrative courts – PBAC – (in Polish: Prawo o postępowaniu przed sądami administracyjnymi) of 30 August 2002, Journal of Laws (Dziennik Ustaw) No 153, item 1270 with later amendments, the administrative court shall reject the complaint, if it was not compensated for the formal deficiencies, within the prescribed period of time.

Trade mark law, case II GSK 155/09

November 30th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 5 September 2008 case file VI SA/Wa 1061/08 dismissed the complaint against the decision of the Polish Patent Office on the refusal to grant the right of protection to MLEMIX MAZURSKI Z-275675 trade mark. Spółdzielnia Mleczarska MLEKPOL from Grajewo filed cassation complaint.

Z-275675

The Supreme Administrative Court in its judgment of 15 October 2009 case file II GSK 155/09 held that the statutory conditions to obtain a right of protection for trade mark set out in Article 132 of the IPL must be met on the date of a trade mark application, and not on the date of the issuance of the decision of the Polish Patent Office that ends the case.

Trade mark law, case II GSK 1022/08

September 11th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 19 June 2008 case file VI SA/Wa 278/08 dismissed a complaint on the decision of the Polish Patent Office on the refusal to grant the right of protection for “clim PUR” Z-270334 trade mark applied for the goods in class 3. VALEO SERVICE société par actions simplifiée filed a cassation complaint.

R-221567

The Supreme Administrative Court in its judgment of 3 June 2009 case file II GSK 1022/08 held that the Court is not alone entitled to precise (supplement or refine) of the allegations included in the cassation complaint, or making hypotheses in this regard, sanctioning so to say its deficiencies. The interpretation of the scope and direction of a complaint is also not permissible, because the cassation appeal should be drafted in a such way that there would be no questions of its interpretation.

Trade mark law, case II GSK 986/08

August 31st, 2009, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 3 June 2009 case file II GSK 986/08 held that the provisions of Article 132(2)(ii) of the IPL does not refer only to the so-called direct risk, that is a situation where the similarity of the opposing trade marks is so close that the consumer may be easily confused but also a situation of the so-called indirect risk, which is based on the fact that the potential customer may mistakenly associate both trade marks.

2. A right of protection for a trademark shall not be granted, if the trademark:
(ii) is identical or similar to a trademark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark.

The risk of confusion as referred to in that provision of the IPL, includes therefore the likelihood of customer confusion as to the origin of the goods in the strict sense, as well as the risk of confusion as to the relationship of sources of origin of goods bearing the opposed trade marks. This is simply a situation where the average customer, following the association between two marks, may assume that a company using a similar trade mark as the owner of a prioro right , is in economiclegal or organizational relationships, that are essential for the manufacture, marking, and the introduction of a product to the market. This case concerned a decision on definitive refusal to recognize the protection of Tim IR-0809911 trade mark.

Trade mark law, case VI SA/Wa 1620/08

January 22nd, 2009, Tomasz Rychlicki

On 22 January 2003 the Spanish company Aceites del Sur-Soosur, S.A. applied to the Polish Patent Office to register the word trade mark LA ESPANOLA Z-260063 in class 29 for goods such as edible oils and fats. The PPO rejected this trade mark application, justifying its decision case file DT-51/08 on the basis of Article 129(1)(ii) and Article 129(2)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character

Article 129(2)(ii)
2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods.

The representative of the Spanish company claimed that Aceites del Sur-Soosur had a long tradition in the production of such goods and is well-known in many countries, and that there is also a CTM registration for the word-figurative trade mark LA ESPANOLA CTM no. 000132092, however, the PPO found that the sign indicated the word origin of goods from Spain. In its original language it means “the Spanish” or “Spain”. And in PPO’s opinion Spain is also famous for production of goods of this type, such as oils.

Aceites del Sur-Soosur filed a complaint before the Voivodeship Administrative Court in Warsaw but the VAC in its judgment of 18 November 2008, case file VI SA/Wa 1620/08 fully agreed with the Polish Patent Office and stressed the fact that such sign, while presented without any graphic element, has purely-for-information status, which points to the place of origin of goods imported from Spain. This decision is not yet final.

Trae mark law, case II GSK 380/07

March 5th, 2008, Tomasz Rychlicki

The Polish Patent Office refused to recognize the right of protection for CHECK-UP IR-0595827 registered under the Madrid Agreement Concerning the International Registration of Marks for Zabaione GmbH and used to designate the goods in class 25, such as clothing for men, women and children and bars for clothes. The PPO ruled that the questioned sign is similar to CHECK-IN IR-0552746 trade mark registered with an earlier priority from 19 June 2002, for Hohe-Modelle Maria Hohe GmbH & Co., intended for marking of the goods in Class 25 such as outerwear for ladies and children.

The PPO ruled that to fulfill the provisions of Article 132(2)(ii) of the IPL, it is necessary to accumulate of the several factors: the signs must be similar to each other, the goods for which trade marks are meant should be homogenous, and as the consequence of the similarity of the signs and the goods, there is a risk of confusion as to the origin of the goods covered by those trade marks.

The Voivodeship Administrative Court in Warsaw in its judgment of 23 April 2007, casefile VI SA / Wa 145/07 dismissed the complaint filed by legal predecessor of Zabaione GmbH. In the opinion of the VAC, the Polish Patent Office correctly refused to recognize the right of protection for a trademark CHECK-UP, pointing to its similarity to CHECK-IN trade mark and the similarity of the goods in class 25, and acknowleded that it may lead to the risk of misleading the public. According to the Court, the PPO correctly assessed the similarity of signs, and rightly pointed out that the trade marks are similar to each other both visually and phonetically because of the first parts of the two signs. Both trade marks are composed of two elements, and have the same first part, “CHECK” and accordingly the suffix “UP” in the applicant’s character and the suffix “IN” in the opposed sign interconnected by a hyphen. According to the Court, the signs are also similar in the aural aspect – they are pronounced very similarly. Different suffixes are not sufficient to prove diversity of both signs. These are components are of secondary importance. The court shared the view of the PPO that the recipient pays more attention to the first elements of signs, and less to the endings, because visually the first letters and syllables attract the most attention and are better remembered. The average customer usually does not examine in detail all the elements of the trade mark, but it perceives a given sign as a general impression.

The VAC agreed with the applicant that the two signs have completely different meaning in English, however, the similarity of signs shall be always from the perspective of the average consumer. The knowledge of English in Polish society is not yet sufficiently widespread. For a person who does not speak English language these signs are fanciful.

The Court shared the opinion of the PPO that both signs are intended to designate similar goods in class 25 and the goods are complementary. According to the Court, a customer who knows goods under the brand CHECK-IN, may think the same company introduces a new range of clothing for men, women and children, branded with CHECK-UP trade mark. The Court emphasized the fact that Article 132(2)(ii) of the IPL uses the term “identical or similar goods”, i.e. the similarity of the goods is not identical as their identity. Similarity occurs in the case of goods of the same kind of similar purpose and conditions of sales. Clothes, for which both trade marks are deisgnated are undoubtedly similar goods regardless of their differences in assortment. The average customer can therefore assume that they are produced by the same manufacturer. An outerwear manufacturer of high quality and original clothes designed for specific audiences, could in fact release a new line of clothing of average standard intended for a wider audience, marking it with CHECK-UP trade mark.

Referring to the applicant’s argument that the two signs benefit from protection in Switzerland and Germany, the Court emphasized that protection of trademarks in each country and the guarantee that effective protection is not absolute. The registration under the Madrid Agreement does not mean that a trade mark is protected automatically in each Member State. The applicant is seeking trademark protection on the Polish territory, so Polish law is applicable to the assessment of the trade mark registrability. The Company decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 28 February 2008, case file II GSK 380/07 dismissed the cassation. The SAC noted that the Company has not provided any arguments concerning the erroneous interpretation of Article 132(2)(ii) of the IPL. It did not indicated whether there was the breach of any regulations on administrative proceedings. If there is no infringement of the proceedings, it can not be argued that there is a breach of substantive law, in this case, Article 132(2)(ii), just because the plaintiff thinks the facts are different. The SAC ruled that if the cassation complaint is based on allegation of improper application of a given provision of substantive law, the arguments included in such a complaint should explain why the accepted legal basis for settlement of the contested provision has no relation to the facts established, and what other provision the court should apply.

Trade mark law, case II GSK 269/06

October 6th, 2007, Tomasz Rychlicki

By decision of 11 August 2005, the Patent Office refused to grant a right of protection for word-figurative “R-Profit” Z-234207 trade mark applied for by Raiffeisen Bank Polska S.A. for goods in Class 36 such as banking services for small and medium enterprises. The Patent Office concluded after examination proceedings that this sign may not be registered because it is similar to PROFIT R-87400 trade mark, registered for Bank Polska Kasa Opieki SA, with priority of 3 November 1993 for goods in Class 36 such as management of interest bearing money investments in zlotys. The PPO also stated that, in this case, the issue of services could not be challenged, since both signs are designed for the same services to a wide audience, i.e. banking services. The PPO ruled that both signs cannot exist simultaneously in trade without the risk of consumers confusions. In the opinion of the PPO there was no doubt that the trade marks are also similar phonetically and semantically.

Z-234207

The Voivodeship Administrative Court in Warsaw in its judgment of 11 May 2006 case file VI SA/Wa 542/06 dismissed the complaint filed by Raiffeisen Bank Polska S.A. and noted at the beggining that Article 315(1)(3) of the IPL, expresses the principle that the issue of the registrability of signs that were registered or applied for registration before 22 August 2001, is assessed on the basis of existing regulations. therefore the provisions of the Act of 31 January 1985 on trade marks are the basis for assessing the registrability of R-Profit trade mark, because it was applied for registration on 10 April 2001.

Article 315
1. Rights conferred in respect of inventions, utility models, ornamental designs, topographies of integrated circuits, trademarks and rationalisation projects, existing at the time of entry into force of this Law, shall remain effective. To these rights the previous provisions are applicable, unless the provisions of this Part stipulate otherwise.

2. Legal relationships established prior to the entry into force of this Law shall continue to be governed by the previous provisions.

3. Statutory requirements for the grant of a patent, a right of protection or a right in registration shall be assessed under the provisions effective at a date of filing of an application concerning an invention, a utility model, a trademark or topography of an integrated circuit with the Patent Office. However, the provision of Article 37(2) shall apply to patent and utility model applications pending at the date of entry into force of this Law.

In the opinion of the VAC that this case involved the same type of services. The Court agreed with the analysis of the list of services performed by the PPO that there exists homogeneity of services between in both lists of goods. In the opinion of the Court, the PPO has properly analyzed the similarity of “R-Profit” and opposing “Profit” signs. Both signs should be compared in aural conceptual and phonetic aspects, bearing in mind that “R-Profit” is a word-figurative trade mark. According to the VAC, even though this case concenrs word and word-figurative trade marks, one may say that there exists graphic similarity, as “R-Profit” and “Profit” differ only by the letter “R” and the core of the two characters – “Profit” is identical. The VAC ruled that the argument that services in question have different distribution channels does not preclude the likelihood of confusion, because an average consumer may think that the service is derived from an entity that combines the organizational relationship and legal rights with the owner of “Profit” trade mark.

Raiffeisen Bank Polska S.A. filed a cassation complaint. The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 269/06 dissmised the case. The SAC held that the comparison of signs should be based on the general, overall impression, which compared trade marks have on the recipient, and thus if the dominant element in both signs are their common elements, there is a similarity between trade marks that is posing a risk of consumers confusion.

Trade mark law, case VI SA/Wa 227/07

September 15th, 2007, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 13 April 2007 case file VI SA/Wa 227/07 interpreted the provisions of Article 129(2)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods.

The Court ruled that Article 129(2)(ii) of the IPL, refers to purely descriptive signs, i.e., characters that the direct and sole function is to provide information about the goods and not on its origin. The distinctiveness of the mark is the fact that the sole and direct information is information which indicates the characteristic of the goods. These signs that may constitute a determination of such characteristics only in a way of indirect conclusion, do not have the descriptive nature. The promotional message of the sign never itself makes it non distinctive, as well as the unoriginal slogan does not decide by itself about the lack of its distinctiveness. This case concerned the registration proceedings of word trade mark “ZAKUPY U NAS WEJDĄ CI W KREW” R-219731 (in English: Shopping with us you will come in the blood) owned by Polish company RAMPEX K. Termin T. Termin Spółka Jawna from Tychy.

Trade mark law, case II GSK 248/06

July 21st, 2007, Tomasz Rychlicki

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

Z-223847

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

Trade mark law, case VI SA/Wa 693/06

January 24th, 2007, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 3 November 2006 case file VI SA/Wa 693/06 held that a dimensional trade mark (3D), which is an exact reproduction of the packaging is not distinctive, and thus cannot be registered.

IR-0405177

This case concerned the refusal to grant the right of protection for International trade mark IR-405177 owned by Ferrero, S.p. A. from Alba.

Trade mark law, case VI SA/Wa 1420/06

November 11th, 2006, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 31 October 2006, case file VI SA/Wa 1420/06 held that while examining whether the rights of protection may be granted, it should be determined whether a sign could serve as a trademark at all. Only after it was decided that a sign could be a trademark, one should examine whether a mark is sufficiently distinctive and therefore to check whether the sign is suitable for distinguishing the specific goods in trade, to designate of which it has been applied for. The lack of distinctive character of a trade mark is considered as the absolute grounds for refusal to trade mark registration, but a sign may acquire distinctive character as a result of use.

The Court found it difficult to say that red color combined with different kinds of equipment and tools, or accessories used in construction is something extraordinary, unique and unprecedented, which could stick decisively in the memory and let the consumer individualize the goods in the market among the goods of the same type but originating from different companies. This judgment concerned separate Color RED Pantone C32, IR-803195.

Trade mark law, case II GSK 377/05

October 6th, 2006, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for word-figurative trade mark OCETIX R-135047 based on provisions of Article 8(2) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments. The request was filed by the competitior of Szczęsna Ewa DELTA L.T.D, who claimed its prior rights to the company name (firm).

Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;

Ewa Szczęsna filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 20 July 2005, case file VI SA/Wa 67/05 dissmissed the case. The VAC agreed with the PPO that the registration of the word-figurative trade mark OCETIX constituted the infringement of the firm of the competitor of Ewa Szczęsna, who established its undertaking in 1991. The Court ruled that the dominant element is the word OCETIX, it attracts the attention and has the distinctive character, while other elements are informative and are indicating the scope of the activities of Szczęsna Ewa DELTA L.T.D.

The Supreme Administrative Court in its judgment of 5 April 2006, case file II GSK 377/05 upheld the contested judgment and ruled that in accordance with Article 164 of the IPL, the right of protection for a trade mark may be invalidated at the request of any person who has legitimate interest. Article 315(3) of the IPL provides the principle according to which the registrability of signs registered or applied for the registration before 22 August 2001, is assessed on the basis of existing regulations. Thus, the law underlying the assessment of trade mark protection for OCETIX that was applied for the registration on 14 October 1998 are the provisions of the TMA.

R-135047

The SAC repeated that the right of protection for a trade mark is deemed as an exclusive, absolute, transferable and heritable property right. It’s a sign intended to distinguish the goods of one undertaking from those of the same type from another entrepreneur. A trade mark performs a distinctive, warranty and advertising functions. The Court noted also that in the course of trade, the category of distinctive signs, in addition to trade marks, are also brands/signs that are distinguishing of companies. The firm is one of such signs. It is the name under a which the registered merchant (general partnership, limited partnership, limited liability company, joint stock company) operates its undertaking. The firm of an undertaking distinguishes a given undertaking from other undertakings, in the same and/or other object/way of business. See R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 13 and 17.

The Court also ruled that the Paris Convention of 20 March 1883 on the Protection of Industrial Property published in Journal of Laws (Dziennik Ustaw) of 1975, No. 9, item. 51 and 52), introduced to the Polish law the term of the trade name, which previously was not used in the Polish legislation. The term collectively covers all the markings of companies enjoyed by the persons mentioned in Articles 2 and 3 of the Convention. The SAC agreed that Article 8 of the Convention does not constitute an independent basis to protect the trade name of the entrepreneur, because it does not specify conditions for such protection and does not indicate what claims should be used in the case of infringement of the rights to the company name. However, this affect the domestic law. See also “Trade mark law, case II SA 2914/01“. The Court ruled that the firm is protected under the Article 37 Code of Commerce (it was repealed by the Code of Commercial Companies later on) and Article 43 of the Civil Code. According to Article 37 of the Code of Commerce, the protection of the firm arises upon its entry into the commercial register, and will expire on the date a court order to withdraw its registration from the register comes into force. The infringement of the firm occurs if there is unlawful use by unauthorized person of a sign which does not distinguish definitively from the firm in a given locality (Article 37 in connection with Article. 35 of the Code of Commerce). Pursuant to Article 43 of the Civil Code, the firm is subject to the protection provided for personal rights/interests (Articles 23 and 24 kc). This protection arises from the date of the first use of a firm in business.