FRIDAY, 30 OCTOBER 2009
Poland: what are serious reasons for non use of a trade mark?
The Polish entrepreneur Elżbieta Nawrot, trading as Przedsiębiorstwo Produkcyjno Handlowo Usługowe AMW from Pyrzowice, asked the Polish Patent Office to take a decision declaring the right of protection for the PARADIES R-73392 trade mark lapsed because of the failure of its owner to put to genuine use the registered trade mark. AMW claimed it had a legitimate interest to start the proceedings because the PPO refused the registration for PARADISE Z-160021 and because Paradies GmbH, the owner of PARADIES R-73392, had approached AMW with a cease and desist letter.
During the proceedings, Paradies GmbH submitted to the PPO materials which, in its opinion, proved that the company complied with all requirements in order to sell their products in Poland, as evidenced by invoices, price lists, business correspondence, exporters' statements and promotional materials. In particular, the German company provided evidence regarding the discussions and negotiations undertaken, whose goal was to sell goods bearing PARADIES trade mark.
However, the Polish Patent Office by its decision of 8 July 2008 decided on the lapse the right of protection for PARADIES R-73392 trade mark (starting on 31 August 1998). PARADIES GmbH filed a complaint to the District Administrative Court in Warsaw.
The Court in its judgment of 27 May 2009, case act signature VI SA/Wa 463/09 ruled that the circumstances that would justify the failure to fulfill the obligation to use the trade mark have not been closely characterized in the Polish Act on Trade Marks. The legal doctrine established a theory that initially these circumstances have the characteristics of force majeure (exceptional event, independent one, which is impossible to prevent - vis humana infirmitas resistere cui non potest). In other cases, the circumstances of serious reasons for the failure to perform the obligation to use a trade mark are based on the possibility of accusing the holder of the registration of reprehensible behaviour. Therefore all subjective factors affecting the business/entrepreneur behaviour are take into the account. Also all objective circumstances affecting the situation are taken into the consideration (as provided in article 5C(1) of the Paris Convention and article 19 of the TRIPS).
In the opinion of the Court, the Polish Patent Office took the correct decision in which it held that the German company had not properly proved that in its case - in relation to a relevant period of time - there were no circumstances that would justify the failure to fulfill its obligation to use the mark PARADIES R-72392. The court shared the views presented in the Polish legal doctrine that the set of reasons justifying non-use of a trade mark includes aside from legal and factual obstacles that are independent of the will of the proprietor of a trade mark registration, also these reasons that were a result of the behavior of the proprietor but did not indicate its guilt (including the negligence). The justified reasons for non-use of a trade mark can only be the so-called "serious reasons" - the serious obstacles of factual or legal nature, that occured independently of the will of the trade mark holder.
Posted by: Tomasz Rychlicki @ 18.21