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CLASS 46


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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THURSDAY, 19 MARCH 2009
Poland: professional term cannot be registered as trade mark

On 25 October 1995 a Polish entrepreneur Tomasz Bednarski, doing business under the firm name OPTYK TOMEK in Warsaw, applied to register the word trade mark OPTOMETRYSTA in class 42 for services such as examination of eye refraction, selection of spectacles for individual needs, selection of contact lenses for individual needs, selection of telescopic spectacles for individual needs. The PPO registered this trade mark (R-104424) on 4 August 1998.

In February 2007, the President of the Executive Board of the Polish Society of Optometry and Optics, informed the Polish Patent Office that the word "optometrysta" (optometrist) is a commonly used professional term, at least since 1983. On March 2007, the request for invalidation of the trade mark was filed by the President of the Patent Office, alleging that the registration was done against article 7(2) of the old Polish Trade Mark Act - TMA - (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with later amendments:

(1) The only signs that shall be eligible for registration as trade marks are those that possess sufficient distinctiveness in ordinary economic activity.
(2) A sign shall not possess sufficient distinctiveness if it simply constitutes the generic designation of the product, if it simply makes a statement as to the properties, quality, number, amount, weight, price, purpose, manufacturing process, time or place of production, composition, function or usefulness of the goods or any similar information that does not enable the origin of the goods to be determined.
In connection with article 167(2) of the Polish Act of 30 June 2000 on Industrial Property Law - IPL - (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.:
The General Public Prosecutor of the Republic of Poland or the President of the Patent Office may, in the public interest, request that the right of protection for a trade mark be invalidated or intervene in an invalidation action already pending.
According to the President of the PPO the disputed trade mark is simply a term for the profession. The World Council of Optometry defines optometry as follows:
Optometry is a healthcare profession that is autonomous, educated, and regulated (licensed/registered), and optometrists are the primary healthcare practitioners of the eye and visual system who provide comprehensive eye and vision care, which includes refraction and dispensing, detection/diagnosis and management of disease in the eye, and the rehabilitation of conditions of the visual system.
In Poland, in 1999, the profession was classified on the list of professions and specialities drew up by the Polish Ministry of Labour (at the position no. 223905) and the President of the Central Statistical Office.

During the hearings at the PPO the owner of the trade mark registration said that because he performs such services, and he knew that no one before him registered this mark, he decided to do it in order to make the financial benefits of the registration (sic!). The Adjudicative Board of the Polish Patent Office in its decision of 30 May 2007, act signature Sp. 141/07 invalidated the right of protection. The PPO acknowledged that, before the date of filing of the trade mark application, the sign has served as a professional term in the optical industry. At the date of the declaration of invalidity this mark did not poses any distinctive character, each market participant should have free access to it and thus nobody should be given the exclusive protection (a monopoly).

Tomasz Bednarski lodged a complaint with the District Administrative Court in Warsaw (decisions and orders issued by the Polish Patent Office are the subject to complaint to the administrative court). Mr Bednarski claimed that the PPO erred in procedural aspects and argued that the PPO should base the request for invalidation on article 31 of the TMA. He also presented an argument that the PPO violated administrative procedure regulations because the registration of the said mark was done after two years, four months and ten days, which had a significant impact on the outcome of the case.
The request for annulment of a right deriving from registration of a trademark may be filed within five years of the date of registration. After the expiry of that period, such request may only be filed in respect of an owner who has obtained registration in bad faith.
According to Mr Bednarski the term to file such request ended in 2004 and the PPO did not base its request for invalidation on grounds such as applicant's bad faith. The DAC did not agree with such arguments. The court in its judgment of 13 December 2007, act signature VI SA/Wa 1708/07 held that even if according to article 315(2) of the IPL
2. Legal relationships established prior to the entry into force of this Law shall continue to be governed by the previous provisions.
the 5 years term, causing the request for invalidation to be inadmissible, did not expire before the entry into the force of the new Polish Industrial Property law, which provided new regulations and the different options to request the invalidation. Such regulations are provided in chapter 6 the IPL titled "Invalidation and Lapse of the Right of Protection for a Trade Mark". Apart from exceptional circumstances described there, the legislature waived the deadline for requesting the invalidation proceedings. As of 22 August 2001, no time limit shall restrict the possibility to request invalidation of the right of protection. Thus, after 22 August 2002, the President of the Patent Office acting in the public interest may at any time request the invalidation of the right of protection that was granted against the law.

Mr Bednarski brought the cassation complaint before the Supreme Administrative Court but his motion was dismissed in judgment of the Supreme Administrative Court of 20 January 2009, act signature II GSK 642/08. The judgment is final.

Posted by: Tomasz Rychlicki @ 14.18
Tags: distinctiveness, Poland, Polish Patent Office, Polish Supreme Administrative Court, Polish trade marks,
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