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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: bad faith in trade mark applications
On August 2008, The Polish Patent Office granted the right of protection for the word-figurative trade mark TEFLEX Q R-211213 for goods in Class 9 such as optical apparatus and instruments, spectacle frames, sunglasses, eyeglasses, articles for the manufacture of spectacles, spectacle cases, chains for spectacles, sports eyeglasses, optical lenses, optical glasses, optical products, and services in Class 44 such as optical services, medical assistance, medical clinics, for the Polish company Krasnodębski i S-ka OPTIBLOK Spółka Jawna.

Eschenbach Optik GmbH filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. The German company argued that the trade mark TEFLEX Q is similar to its CTM t-flex no. 001821651 that was registered for goods in Class 9 such as spectacles and spectacle frames. Moreover, it pointed out that the questioned trade mark has been applied for registration in bad faith, and its registration and use may lead to the infringement of the applicant's property rights and the unfounded use of the reputation of the t-flex designation. The fact that the registered sign is confusingly similar and resembles t-flex brand for the same narrow class of products was an argument for the bad faith. Such action indicated the intention to use consumers' knowledge of products bearing t-flex sign. The brand t-flex is a fanciful designation and it was extremely unlikely for the OPTIBLOK to apply for registration of the sign that was very similar. It was merely a coincidence. The German company noted that it conducts its business in more than 80 countries, including Poland. From the beginning, the Company manufactured and sold of glasses and optical devices, and TITANflex technology is one of the most important of its products. The Polish company is a competitor on the local market. The registration and use of the trade mark TEFLEX Q infringes the Community trade mark t-flex and violates the property rights of Eschenbach Optik GmbH. The existence of similar signs can result in negative consequences for clients and lead them to confusion with regard to the origin of goods. The infringement of the reputation of the t-flex sign was based on its dilution. While referring to the similarity of the goods, the German company noted that the services of class 44 are complementary to the goods in Class 9.

The Polish company argued that it did not act in bad faith, because before filing the trade mark application, it used services of a patent and trade mark attorney and therefore acted negligently. At the time of registration there was no identical or similar signs to TEFLEX Q mark. Additionally, the brand t-flex does not have distinctive character, because there are tens of thousands of products with the same name in the world.

The Polish Patent Office invalidated the right of protection for the trade mark TEFLEX Q R- 211213 because, it found that the characters are very similar. However, PPO did not agree with the argument that the application was made ​in bad faith. According to settled case-law and legal commentators, the mere fact that one party applies for a trade mark similar to a sign used by the other party is not deemed as acting in bad faith. The bad faith must be proved based on other factors than knowledge of market presence of similar brands and signs, such factors include for instance dishonesty in relation to the interests of another entrepreneur. The reputation of the trade mark t-flex was also not proved. The mere statement that the German company had its Polish subsidiary was not sufficient to prove that Eschenbach Optik GmbH was present on the Polish market before the questioned trade mark was applied.

The Voivodeship Administrative Court in its judgment of 17 February 2012 case file VI SA/Wa 1885/11 dismissed it and ruled that the PPO referred precisely and in detail to all facts and evidence of the case. OPTIBLOK filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 January 2014 case file II GSK 1542/12 dismissed it.
Posted by: Tomasz Rychlicki @ 18.26
Tags: bad faith, Polish law, Polish Patent Office, Polish Supreme Administrative Court, similarity of goods, trade mark invalidation, Voivodeship Administrative Court,
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