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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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Stefan Schr÷ter
Tomasz Rychlicki
Yvonne Onomor
Poland: reputation is not enough

The Polish newspaper Rzeczpospolita reports recent judgment of the Polish Supreme Administrative Court (act signature II GSK 138/07) regarding expiry of Red Bull's trade mark.

Austrian company Red Bull GmbH has received trade mark protection right for its word mark based on international registration (IR-641378 A) on 19 March 1998 (notification of 17 September 1996), in almost all classes (3, 5, 12, 14, 16, 18, 20, 25, 26, 28, 29, 30, 32, 33, 34, 35, 39,41 and 42). Polish company - Przedsiebiorstwo Produkcji Lodˇw "KORAL" - applied for trade mark registration for RED BLUE word sign in class 30 (ice creams and other products) on March 2004, Z-277694. However, the Polish Patent Office recognized earlier priority of Red Bull's trade mark and rejected the application.

Polish company (Koral company) requested a motion to declare the expiration of trade mark rights of Red Bull's sign in class 30 claiming that Austrian company failed to put to genuine use of the registered trademark for the goods covered by the registration for a period of five successive years. The PPO agreed with "Koral" and declared the expiration of Red Bull's trade mark in its decision of 30 October 2005 (act signature Sp. 199/04). Red Bull's evidences of use that were based on the fact that Austrian company has put its trade mark on boxes with sweets which were later sent during different occasions to customers and business partners were found insufficient. The date on which five years period ended was set by the PPO on 9 July 2004 (the date on which the request for invalidation was filed). Both parties appealed to the District Administrative Court in Warsaw. Polish company did not agree with PPO's findings as regards trade mark rights' expiration date and Austrian company claimed that PPO should consider reputation of its trade mark.

The DAC in its judgment of 7 September 2006 (act signature VI SA/Wa 557/06) held that reputation is not taken into account during proceedings for lapse of a right of protection. Arguments that Koral company has no standing were rejected by the Court because both parties were also involved in unfair competition proceeding before civil court. Once again, both companies filed a cassation complaint before Supreme Administrative Court. Judge Malgorzata Korycinska noted

The reputation of a trade mark is irrelevant when there is invalidation proceedings. This is not the stage. Reputation could be taken into account during the application proceeding for Koral company's trade marks. A single fact of non-used Red Bull's trade mark being an obstacle for registration was a sufficient condition for declaring its expiry.

Koral Company has also called into question the date of expiry of the right of protection. It was the reason for SAC to discuss the issue in extended chamber. The court gave its opinion in judgment of 23 April 2008, act signature II GPS 1/08. Class 46 reported this case.

Class 46 has also reported about Red Bull's legal struggles in Benelux.

Posted by: Tomasz Rychlicki @ 16.20
Tags: invalidity, Poland, Polish courts, Polish Patent Office, Polish Supreme Administrative Court,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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