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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: it was not an obvious clerical mistake
On 10 March 2006, Red Bull GmbH applied for the color trade mark Z-307435. The trade mark application included the following description "a mark consists of the color blue (2/4/C) and silver (877 C) that fill half of a sign". However, the company did not specify how both colors would fill the applied trade mark, i.e. whether horizontally or vertically. In the decision on the grant of the right of protection that was issued of 2008, the PPO indicated only two categories of the Vienna Classification: 29.01.2004 and 29.01.2006. In its resolution of 2009, the PPO decided to correct the decision as the so-called "obvious clerical mistake". The Polish Patent Office justified its resolution based on reproductions of the trade mark that were attached to the trade mark application Z-307435. The PPO decided that the applied trade mark was a figurative one and noted that the trade mark was vertically divided into two parts. The PPO ruled that the category 25.05.2001 (backgrounds divided vertically into two parts) should be also added, because even the applicant stated that the colors fill in half, and presented relevant reproductions of the sign, where one can clearly see two rectangles placed side by side. The PPO added also the category 04.26.2002 (rectangles).

Red Bull filed a complaint against the resolution of the PPO before the Voivodeship Administrative Court in Warsaw. The Company claimed that its trade mark should not be defined in the PPO's decision as a figurative, but as an abstract colorful trade mark, which accurately reflects its true nature. Red Bull argued that the Polish Patent Office erred in applying categories of the Vienna classification, since the application concerns an abstract colorful sign. Consequently, it was correct to include in a trade mark application Z-307435 only a category that was corresponding to the colors. Red Bull claimed that the Polish Industrial Property law and Article 15(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) allow for the registration of combinations of colors in the Republic of Poland.

The Voivodeship Administrative Court in Warsaw in its judgment of 21 April 2011 case file VI SA/Wa 2519/10 overturned the questioned resolution and held it unenforceable. The VAC ruled that both the doctrine of law and case-law stand on a restrictive view that the admissibility of correcting "clerical and accounting mistake/miscarriage" is determined by the premise of "obviousness" of the mistake. The "obviousness" of a clerical, accounting or another mistake should either result from the nature of the mistake or from the comparison of a decision with its justification or with the content of the request, or other circumstances. An obvious mistake is deemed as an apparent, contrary to the goal, deliberate misuse of the word, apparently erroneous spelling or an omittment. The Court held that the Vienna categories added by the PPO defined the shape of a sign, of which there was no mention in the trade mark application. So, the PPO "clarified" the content its decision of May 2008 by pointing to the shape of the trade mark applied for. By describing the form of a reproduction attached to the trade mark application, the PPO referred to a figure of rectangle and consequently attributed such a form to the trade mark at issue. Meanwhile, a reproductions has its own form, that is independent of the form of the trade mark itself. A form, shapes and dimensions of the reproductions (photographs or photo-copies of a trade mark) are defined in § 9 of the Regulation of the Prime Minister of 8 July 2002 on filing and processing of trademark applications. The Court found that there was no reason to draw conclusions about the shape of the trade mark only on the basis of the rectangular shapes of the reproduction included in the trade mark application Z-307435.
Posted by: Tomasz Rychlicki @ 13.25
Tags: Agreement on Trade-Related Aspects of Intellectual Property Rights, color trade marks, non-traditional trade marks, Polish Act on Industrial Property Law, Polish Administrative Proceedings Code, Polish Patent Office, Voivodeship Administrative Court,
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