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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: differences between business reputation and trade mark

R-136520 On September 2006 The Polish Patent Office issued a decision invalidating the right of protection of the BOSS LIGHTS R-136520 trade mark, owned by Reemtsma Cigarettenfabriken GmbH from Hamburg, Germany. The PPO ruled that the registration of the disputed mark occurred in violation of article 8(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:

A trade mark shall not be registrable if:
ii) it infringes the personal or economic rights of third parties;
It was indisputable for the PPO that BOSS LIGHTS R-136520 consists of the "BOSS" sign, which was written in black, this being the only element of BOSS R-66417 trade mark and the main element of other signs: HUGO BOSS R-66418, BOSS HUGO BOSS IR-584899 and BOSS IR-606620 which are owned by HUGO BOSS Trade Mark Management GmbH & Co. KG from Metzingen, Germany.

Reemtsma filed a complaint before the District Administrative Court in Warsaw. The court rejected the complaint in its judgment of 4 September 2007, act signature VI SA/WA 2195/06. Reemtsma filed a cassation complaint to the Supreme Administrative Court. The SAC agreed with Reemtsma's arguments that the PPO did not explain the facts accurately and did not thoroughly conside the entire evidence. The case was sent back to the DAC.

The District Administrative Court in its judgment of 6 February 2009, act signature VI SA/Wa 1483/08 annulled the contested decision of the PPO and decided that the decision was not subject to execution. The DAC also stressed the fact that it is necessary to distinguish the renown of an entrepreneur - its good reputation and positive image - from the trade mark's reputation (renown). In the case of the reputation (renown) of a trade mark - the subject of positive perceptions is the mark itself and the goods identified by such mark as originating from a particular business, and the reputation of the entrepreneur is generally positive perceptions and assessments about the business.

See also previous Class46 post titled "Poland: proving the fame of a trade mark" as regards more detailed analysis of the Polish courts in the subject of renown trade marks and the aforementioned dispute.

Posted by: Tomasz Rychlicki @ 15.01
Tags: Famous marks, Poland, Polish courts, Polish Patent Office,
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