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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: succession of proceedings
On May 2007, the Polish Patent Office (PPO) granted the right of protection for the word trade mark Vondutch R-190394, which "SEREN TEKSTIL" Sp. z o.o. sought for goods in Classes 25 and 35. The Irish company V D Europe from Dublin opposed, arguing that it was the owner of the CTM VON DUTCH no. 000336495, registered with the earlier priority of 8 August 1996 for good in Class 25. On 20 January 2010, the patent attorney representing V D Europe informed the PPO that Royer Brands International Sàrl was the new owner of the CTM VON DUTCH. The representative provided proper evidence of total transfer of ownership and of the Power of Attorney (POA) from the new owner.

The Adjudicative Board of the Polish Patent Office in its decision of 3 February 2010 case no. Sp. 499/08 dismissed the opposition, and decided that Royer Brands International had no right to conduct proceedings that were started by another company. The PPO ruled that Royer Brands International is not related structurally, financially, or linked in any legal way with V D EUrope. The PPO decided that the request was unfounded, because the owner sold its rights to a trade mark. Royer Brands International filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 23 November 2011 case file VI SA/Wa 1530/11 reversed the contested decision, ruled it unenforceable, and returned the case to the PPO for reconsideration. The Court found that Royer Brands International had confirmed all the declarations of will and actions that were taken during the opposition proceedings by every person acting on the basis of previously submitted POA. In the opinion of the Court, the wording of the Polish Industrial Property Law was decisive in the present case. A trade mark may be assigned or be subject to succession. It may also be assigned in respect of certain goods for which it has been granted, if the goods for which the trade mark remains registered on behalf of the vendor are not of the same kind. Once assigned, the right in question should be dealt with as independent of the right enjoyed by the vendor. This provision introduces a general principle of transferability of the trade mark. The disposal of rights of protection may be primarily based on a contract of sale, exchange, or a contract of donation. However, it should be also stressed that the agreement transferring the right of protection shall be in writing, in order to be valid. Also, the relevant provisions of the Administrative Proceedings Code were applicable in this case. In matters concerning transferable or hereditable rights, in case of a transfer of the right or death of the party during the pendency of the proceedings the legal successors of the party shall join the proceedings in lieu of the party.

In the opinion of the Court, Royer Brands International, under the law being in force in the Republic of Poland, had not only become the legal successor to the CTM VON DUTCH, which was the result of the valid contract of transfer of the Community trade mark, which was accepted and confirmed by OHIM in 2009, but was also the legal successor in the opposition proceedings. This means that the PPO breached the provisions of substantive law (regulations included in Article 162 of the IPL) through their incorrect interpretation, and consequently its improper application in the case. Furthermore, the Court ordered the PPO a careful analysis of the substantive merits of the opposition, including the similarity of the signs.
Posted by: Tomasz Rychlicki @ 08.44
Tags: Polish Act on Industrial Property Law, Polish Administrative Proceedings Code, Polish courts, Polish law, Polish Patent Office, trade mark opposition, trademark law, Voivodeship Administrative Court ,
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