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Poland: trade mark issues on a geographical name of gmina

On August 2008, in a post entitled "Poland: different labels - no confusion" this Class 46 team member commented on two decisions of the Polish Patent Office regarding differences in labels for mineral water (case no Sp. 127/07 and Sp. 254/07) that shared the same word element "Zloty Potok" ("Golden stream"), this being also the name of a village from Gmina Lesna.

The vogt of Gmina Lesna and Zloty Potok Company did not agree with PPO's findings and they lodged a complaint to the District Administration Court in Warsaw arguing that Sokpol Company's trade mark "Zloty Potok" R-177610 may lead consumers to confusion as regards the orgin of goods, that it was applied for in bad faith and it is unlawfully using the name of a village. The PPO argued that according to the Court of the First Instance's findings in case T-379/03, Peek & Cloppenburg KG v. OHIM (Cloppenburg), the registration of geographical names which are unknown to the relevant class of persons is not in principle precluded.

The District Administrative Court in Warsaw dismissed both complaints in its judgments, act signatures VI SA/Wa 1996/08 and VI SA/Wa 1995/08. The DAC held that the disputed mark should be assessed as a whole, which in this case concerns a sign that is made up of figurative element and "Zloty Potok" description. In consequence, this trade mark is is fanciful sign which could not constitute the registration of a geographical or historical name. The sign does not mislead consumers because it does not contain information that the materials for the production of goods it was registered for come from Zloty Potok, but that they originate from Jura Krakowsko-Czestochowska. Thus the argument based on bad faith registration cannot be taken into account.

Polish courts have decideda couple of cases that concerned geographical names and trade marks and this Class46 team member feels obliged to mention some of them and briefly write about the conclusions the courts have reached.

On 10 October 2002, the city council of Polanica Zdrój passed resolutution no XLIV/247/02 on permission to use the commercial name of the city. The council agreed that the trade mark application consisting of "Polanica Zdrój" words would be applied on behalf of ZUK company. The resolution also included an attachment - a model contract which was deemed as an integral part of the resolution. The format of this agreement had the same legal nature as the resolution. The agreement set out, inter alia, the terms and conditions of use of the city name as a trade mark for mineral water, the rules for ZUK company regarding the payment to Gmina, the amount of the monthly fee - set to one grosz (a hundredth part of 1 zloty) - from a bottle of water sold, but not less than 5000 PLN per month, the rules how to change the contract, the method of settling disputes.

On 5 Nover 2002, the governor of a voivodeship (a first instance body to decide on the validity of local governments legal acts) ruled the resolution invalid. The governor decided that Polanica Zdrój was not the name of local government (gmina) but a geographical designation that is widely used in the Republic of Poland and abroad. Nouns and adjectives based on that geographical name are used without any restrictions. Reducing the use of a common name and its commercialization requires a proper law - an enactment. In the current legal system, there is no such law, therefore in other cities their names are used without restrictions.

Gmina filed a complaint to the Supreme Administrative Court arguing that, while filing an application for the registration of trade mark consisting of the geographical name of Polanica Zdrój, the company ZUK has a mandatory obligation to demonstrate the right to use the name. The Governor asked the court to reject the complaint because a geographical name is not the name of local government but the name commonly used and there is no legal basis for placing restrictions on its use, and what is linked to that - to charge fees for the use of a Polanica Zdrój name and that the name of a place can not be regarded as a trademark.

The Supreme Administrative Court (oz. Wroclaw) in its judgment of 18 March 2003, act signature II SA/Wr 2928/02 ruled that there is no legal basis for the municipal council to take a resolution on the commercial use of the name of the city and to establish the level of fees charged for such use. The city council has exceeded the scope of its powers by setting a draft of a contract in its resolution and stepped into the powers of the mayor which is a body entitled and empowered to manage the city, and thus being the right party to enter into such contracts.

R-88722On 10 April 1996 the Polish company PPZU Kry-Pop from Krynica filed a request to the Polish Patent Office to issuee a decision on the invalidation of of the right of protection for word-figurative trade mark Krynica Zdrój R-88722 owned by "Mul." company from Warsaw (later on the ownership of the company was transfered to Krynica Zdrój Sp. z o.o. from Zywiec) registered in class 32 for goods such as sparkling mineral water, mineral water and flavored water.

Kry-Pop argued that the contested trade mark is similar to its trade mark "Kryniczanka" R-95268 registered with an earlier priority which is also widely known in Poland for the designation of mineral water originating from the area of the town of Krynica. The District Administrative Court in Warsaw in its judgment of 12 May 2004, act signature 6 II SA 1156/02, ruled that "Krynica Zdrój" and "Kryniczanka" trade marks are not similar to the extent that they may mislead customers as to the origin of the goods and they differ in visual and phonteic aspects. In addition, in the absence of similarity of both trademarks it was difficult for the Court to decide whether the rules of social coexistence were violated by the later registration of a trade mark which has a different phonetic tone and which is not misleading customers about the origin of goods.

R-147476The District Administrative Court in Warsaw in its judgment of 17 January 2006, act signature VI SA/Wa 1945/05 in case concerning SZCZAWNICKI zdrój R-147476 trade mark ruled that the Polish Patent Office while deciding the request for the invalidation of the right of protection for a trade mark has to examine the sign in a form in which it was applied for the registration not in a form that the trade mark is used on the market, for example as the product label. The refusal of the invalidation of SZCZAWNICKI Zdrój trade mark (used inter alia as a designation for mineral waters), which was conducted by the Polish Patent Office without adequate consideration, especially in case if the disputed mark has information character that points to the place of origin of goods that are produced by the prorietor of the earlier trade mark registration and which may in consequence be perceived by the consumers as an indication which has no relation with a given producer, was made in violation with the provisions of administrative procedure.

Posted by: Tomasz Rychlicki @ 13.40
Tags: geographic name, gmina, Poland, Polish courts, Polish law, Polish Patent Office, Polish Supreme Administrative Court,
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