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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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Tomasz Rychlicki
Yvonne Onomor
MONDAY, 6 APRIL 2009
Poland: reputation and renown of non-registered trade marks

Z-311784On 8 June 2006, the Polish company LA RIVE, M. Szymula P. Szostak spólka jawna from Grudziadz applied to register the word-figurative trade mark AMORE DI NOTTE WOMAN LA RIVE EAU DE PARFUM in class 3 for goods such as cosmetics (Z-311784). After the examination, The Polish Patent Office decided that the rights of protection could not be granted because it would infringe on article 131 (1)(ii) f 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 changes.

1. Rights of protection shall not be granted for signs:
(ii) that are contrary to public order or good customs.
Armani Code packagingIn PPO's opinion granting the rights of protection for the disputed trade mark would be contrary to “good customs” because AMORE DI NOTTE sign was similar to the ARMANI CODE trade mark of Giorgio Armani S.p.A. from Italy in terms of colour, form and layout (the ARMANI CODE trade mark is not registered in the Republic of Poland). In PPO's view there was a reasonable presumption that the applicant intended to take advantage of someone else's brand. Materials from internet websites that claimed the AMORE DI NOTTE WOMAN LA RIVE EAU DE PARFUM perfume to be an alternative to ARMANI CODE were taken as the evidence.

The Polish company claimed that its sign and packaging for ARMANI CODE differed significantly and that LA RIVE could not take any responsibility for content that was posted on the website of which the company was not the author.

The PPO said that the application to register AMORE DI NOTTE sign took place in violation of the principles of good business practices, which is one of the principles of social coexistence. The principles are the rules of social coexistence, which determine the boundaries of human behaviour in such a way as to ensure the optimum of non-conflicting social order and which everyone may require to comply with from anybody. Accordingly, AMORE DI NOTTE could be considered as sign that is imitating signs, brands of companies that hold a good reputation in the market. In the circumstances of this case, one could say that granting the rights of protection would be contrary to “good customs”.

The Polish Company filed before the Polish Patent Office a motion for rehearing the case. La Rive argued that public order and good customs should be judged according to standards that exist in the market, which is divided into two independent and separate markets: the market of selective - the one that ARMANI perfumes are sold and mass market – on which La Rive's products are sold. La Rive argued that products of both companies have different customers and markets, therefore there is no risk of buying an expensive perfume because these products are not put in one place. Such produtcs are sold in different places and for drastically different prices.

The PPO upheld its decision. The Polish company filed a complaint to the District Administrative Court in Warsaw. The PPO request the court to dismiss the complaint. The PPO presented arguments that Armani's reputation is out of the question, because perfumes and cosmetics bearing this trade mark appear most frequently in advertisements, magazines, cosmetic salons, and on shelves in stores together with other renowned brands.

The Court found irregularities in PPO's proceedings. According to article 1 § 1 of the act on 25 July 2002, the Law on Administrative Courts (in Polish: Prawo o ustroju sadów administracyjnych), Dziennik Ustaw (Journal of Laws) of 2002, no. 153 pos.1269 with later changes,
the court exercise the justice by controling the activities of public administration, and in the light of § 2, this control shall be exercised in conformity with the substantive law and procedural rules - if the law does not provides otherwise

and according to article 134 § 1 the act of 30 August 2002, the Law on Proceedings before The Administrative Courts (in Polish: Prawo o postepowaniu przed sadami administracyjnymi) Dziennik Ustaw (Journal of Laws) of 2002, No. 153, pos. 1270 with laters changes).

The Administrative Court shall decide a case within its scope but without being bound by the allegations and conclusions of the complaint, and the legal basis.
The DAC stressed the fact that the IPL does not refer expresis verbis to the situation of the renowned marks (signs with reputation) that were not registered. Such marks are not left without any legal protection. The legal basis for refusal to register may be found in article 131(1)(ii)

The Court ruled that “good customs” are the indication of behaviour which objectively exists in society's ethical sense. Good customs are also economic and functional criteria. Such criteria are based on the assessments ”oriented to ensuring the smooth operation of competition, through accurate and unadulterated competition of quality, price or other characteristics of goods desired by consumers”, the DAC cited J. Piotrowska publication titled “Renown trade marks” (in Polish: “Renomowane znaki towarowe”) published by C.H. Beck. The DAC held that market competition should be transparent for business and customers and unadulterated. The criteria for evaluation of behavior in business should be reasonable and should allow market participants to understand what behavior is permitted and what forbidden

The DAC held that PPO's decisions should be preceded by the findings as regards the renown and recognized fame of the company from Italy and the packaging which belongs to the company. In courts view PPO's decisions lack such findings. The PPO also wrongly assessed that Polish company took the advanted of the reputation of the Italy company by imitating its packaging which was not a registered trade mark. The PPO tried to find the reputation of the packaging from the reputation of the company. According to the Court, the attribution of a trade mark which has not been registered (ARMANI CODE packaging) as originating from a renown, well-known company and the company's reputation needed to proven according to the rules of administrative procedure. The court held that the Polish Patent Office has to re-hear the case. The PPO has to consider circumstances mentioned in DAC's judgment and to complete the evidence to the extent required by the Court. The provisions of law, in particular, whether the trade mark that was applied to register is contrary to the said principles of good customs should be applied to such facts and evidence.

Judgment of the District Administrative Court in Warsaw of 28 November 2008, act signature VI SA/Wa 1521/08.

Posted by: Tomasz Rychlicki @ 11.44
Tags: Famous marks, Poland, Polish courts, Polish Patent Office, Polish trade marks,
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