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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Poland: serious reasons for non-use
VINEX PRESLAV from Bulgaria asked 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 in Poland its international trade mark MADARA IR-0929344. In the preliminary refusal sent to WIPO, the PPO stated that the trade mark MADARA R-97447 is an obstacle to recognition of the protection of the trade mark MADARA IR-0929344 in Poland. VINEX argued that the disputed sign had never been used in Poland in relation to the goods covered by the registration, beverages, wine, spirits, brandies and cognacs (Class 33). Dimyat claimed that it 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, made an entry of the licensee into the register. However, under the decision of April 2006, the licensee was removed from the register. The "confusion" around the entry of a licensee undermined Dimyat's belief and faith as to whether the company will be able to exercise that right at all. The PPO decided on the lapse of the right of protection.

Dimyat Polska filed a complaint against this decision and argued that there existed serious reasons for 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 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 licence (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.
Posted by: Tomasz Rychlicki @ 08.56
Tags: genuine use, non-use, Polish Act on Industrial Property Law, Polish courts, trade mark lapse, Voivodeship Administrative Court,
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