FRIDAY, 27 FEBRUARY 2009
OrientExpress in Poland
On 1 August 2002 Polish company HPM from Koszalin applied to register the word-figurative trade mark HPM ORIENTEXPRESS in class 43 for services such as catering and food services, The Polish Patent Office registered this trade mark (R-176922) in its decsions of 19 July 2006.
Societe Nationale Chemins de Fer Francais (SNCF) filed a request to invalidate the right of protection based on article 132(2)(ii) and (iii) of the Polish Act of 30 June 2000 on Industrial Property Law (ustawa Prawo wlasnosci przemyslowej z dnia 30 czerwca 2000 r.) published in Dziennik Ustaw 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later changes:
2. A right of protection for a trade mark shall not be granted, if the trademark:
(ii) is identical or similar to a trade mark 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,
(iii) is identical or similar to a renown trade mark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trade mark. The above provision shall apply to well-known trade marks accordingly.
SNCF has claimed that the sign ORIENT-EXPRESS is well-known, reputable and clearly associates with the legendary railway line Paris-Istanbul. SNCF is also the owner of CTMs registered in class 16, 35 and 42: ORIENT-EXPRESS, VENICE SIMPLON ORIENT~EXPRESS (CTM no 000115881). On September 2008, SNCF has opposed CTM registration ORIENT EXPRESS CHINA FUND (CTM no. 1006759278).
On 14 January 2009, The PPO postponed the hearing in this case (act signature Sp. 26/08) and ordered both parties to supplement their statements and evidences.
Posted by: Tomasz Rychlicki @ 12.30
Tags: Famous marks, international trade marks, Poland, Polish Patent Office,