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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TUESDAY, 27 OCTOBER 2009
Poland: sometimes it's better not to refrain from trade mark use
The story which this Class46 team member wants to share with PT readers, concerns sweet trade marks but, for one party, it has a bitter taste of losing an important case. Some commentators often refer to Michałki trade mark as sweets/candy of discord.
The Polish company "ŚNIEŻKA - INVEST" sp. z o.o. which owns the MICHAŁKI R-72668 trade mark, filed before the Polish Patent Office a request to issue a decision declaring the lapse of the right of protection for the "Goplana MICHAŁKI" R-139668 trade mark owned by JUTRZENKA S.A. form Bydgoszcz. Jutrzenka asked the PPO to dismiss the request because of the absence of legal interest on ŚNIEŻKA - INVEST's side. According to Justrzenka, the fact that there existed an earlier trade mark owned by ŚNIEŻKA - INVEST and the reference to constitutional principles of the freedom of economic activity, does not establish the existence of a legal interest. Moreover, the company from Bydgoszcz asked for the rejection of the request due to the existence of valid reasons for non-use of "Goplana MICHAŁKI" R-139668 trade mark for goods such as confectionery. As for the important reason for non-use, the company pointed out to the ongoing administrative proceedings for the invalidation of a trade mark, claiming that the use of the mark in the course of those proceedings would be irrational and could jeopardize the company's future claims that the opposing party would request.
The PPO issued a decision that the "Goplana MICHAŁKI" R-139668 trade mark for goods in class 30 for confectionery had lapsed. The owner filed a complaint to the District Administrative Court in Warsaw. The DAC in its judgment of 26 June 2009, case act signatureVI SA/Wa 81/09 held that:
There is no need to refrain from using a trade mark during the proceedings for its invalidation. As long as the right of protection for a trade mark lasts the party has the exclusive right to use the mark. Hence, the non-use of a trade mark on the ground that the proceedings were held on its invalidation, was the sole decision of the owner, then it can not be given the importance of behavior dictated by compelling reasons.
The judgment is not final yet.
Posted by: Tomasz Rychlicki @ 16.49
Poland, Polish courts, Polish law, Polish Patent Office, Polish trade marks, trade mark use,,
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30 October 2009 @ 14.35
It should be noted that some commentators say that Poland did not implemented the Directive 89/104 correctly 'cause there is no requirement to prove the existence of legal interest in EU while filing the application for revocation of the mark
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