Polish IP & IT law – copyright trademark computer internet telecomm

Archive for: trade mark register

Trade mark law, case II GSK 487/12

June 27th, 2013, Tomasz Rychlicki

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

R-175055

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

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

Trade mark law, case VI SA/Wa 2519/10

June 6th, 2011, Tomasz Rychlicki

On 10 March 2006, Red Bull GmbH applied for the color trade mark Z-307435. The trade mark application included the following description “a mark consists of the color blue (2/4/C) and silver (877 C) that fill half of a sign”. However, the company did not specify how both colors fill the applied trade mark, i.e. whether horizontally or vertically. In the decision on the grant of the right of protection that was issued of 2008, the PPO indicated only two categories of the Vienna Classification: 29.01.2004 and 29.01.2006. In its resolution of 2009, the PPO decided to correct the decision as the so-called obvious clerical mistake. The Polish Patent Office justified its resolution based on reproductions of the trade mark that were attached to the trade mark application Z-307435. The PPO decided that the applied trade mark was a figurative one and noted that the trade mark was vertically divided into two parts. The PPO ruled that the category 25.05.2001 (backgrounds divided vertically into two parts) should be also added, because even the applicant stated that the colors fill in half, and presented relevant reproductions of the sign, where one can clearly see two rectangles placed side by side. The PPO added also the category 04.26.2002 (rectangles).

Z-307435

Red Bull filed a complaint against the resolution of the PPO before the Voivodeship Administrative Court in Warsaw. The Company claimed that its trade mark should not be defined in the PPO’s decision as a figurative, but as an abstract colorful trade mark, which accurately reflects its true nature. Red Bull argued that the Polish Patent Office erred in applying categories of the Vienna classification, since the application concerns an abstract colorful sign. Consequently, it was correct to include in a trade mark application Z-307435 only a category that was corresponding to the colors. Red Bull claimed that the Polish Industrial Property law and Article 15(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) allow for the registration of combinations of colors in the Republic of Poland.

The Voivodeship Administrative Court in Warsaw in its judgment of 21 April 2011 case file VI SA/Wa 2519/10 overturned the questioned resolution and held it unenforceable. The VAC ruled that both the doctrine of law and case-law stand on a restrictive view that the admissibility of correcting “clerical and accounting mistake/miscarriage” is determined by the premise of “obviousness” of the mistake. The “obviousness” of a clerical, accounting or another mistake should either result from the nature of the mistake or from the comparison of a decision with its justification or with the content of the request, or other circumstances. An obvious mistake is deemed as an apparent, contrary to the goal, deliberate misuse of the word, apparently erroneous spelling or an omittment. The Court held that the Vienna categories added by the PPO defined the shape of a sign, of which there was no mention in the trade mark application. So, the PPO “clarified” the content its decision of May 2008 by pointing to the shape of the trade mark applied for. By describing the form of a reproduction attached to the trade mark application, the PPO referred to a figure of rectangle and consequently attributed such a form to the trade mark at issue. Meanwhile, a reproductions has its own form, that is independent of the form of the trade mark itself. A form, shapes and dimensions of the reproductions (photographs or photo-copies of a trade mark) are defined in § 9 of the Regulation of the Prime Minister of 8 July 2002 on filing and processing of trademark applications. The Court found that there was no reason to draw conclusions about the shape of the trade mark only on the basis of the rectangular shapes of the reproduction included in the trade mark application Z-307435.

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 248/06

July 21st, 2007, Tomasz Rychlicki

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

Z-223847

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

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

July 21st, 2006, Tomasz Rychlicki

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

Z-223847

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

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

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

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

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

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

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

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